DABUS, short for Device for the Autonomous Bootstrapping of Unified Sentience, is an artificial intelligence (“AI”) machine that can invent and generate new ideas without any human input. DABUS is a form of neurocomputing and in some sense, DABUS may be said to mimic aspects of human brain function. DABUS and its creator Dr. Stephen Thaler have garnered worldwide attention when patent applications naming DABUS as the sole inventor were filed with the World Intellectual Property Organization (“WIPO”) and several national patent offices. These filings have spurred meaningful discussion about AI-related inventorship and ownership. Recently, the Federal Court of Australia held in Thaler v Commissioner of Patents [2021] FCA 879 that an AI machine, such as DABUS, can be a patent inventor, citing the potential value of AI in pharmaceutical research, including the use of AI in high-throughput drug screening, drug repurposing, and vaccine development.

Some Bumps in the Road – Patent Offices’ Rejections

In 2019, Dr. Thaler filed patent applications for inventions created by DABUS. One such invention relates to a light beacon that flashes in a new and inventive manner that attracts attention, as described in US Patent Application No. 16/524,350. Another invention relates to a beverage container based on fractal geometry, as described in US Patent Application No. 16/524,532 and International Publication No. WO 2020/079499. These applications list Dr. Thaler as the applicant and DABUS as the sole inventor.

Since the filings, the DABUS patent applications have experienced some bumps in the road.

The European Patent Office (“EPO”) rejected the DABUS patent applications. The EPO takes the position that an inventor must be a natural person and an AI machine has no recognized legal personality.  Proceedings before the EPO’s Board of Appeals remain pending.

The US Patent and Trademark Office (“USPTO”) issued notices stating that the filed patent napplications failed to identify the inventor by his or her legal name. In reply, Dr. Thaler filed petitions requesting the notices be reviewed and vacated for being unwarranted and/or void. The USPTO denied Dr. Thaler’s petitions and published a final decision in April 2020, stating that DABUS could not be an inventor. The USPTO reasoned that an inventor could only be a natural person, citing cases holding that inventors cannot be corporations or sovereigns. Dr. Thaler filed suit in the District Court for the Eastern District of Virginia, seeking review of the USPTO’S decision. The court sided with the USPTO and held that based on the plain statutory language of the Patent Act and Federal Circuit authority, an inventor must be a natural person. The court went on to say that “[a]s technology evolves, there may come a time when artificial intelligence reaches a level of sophistication such that it might satisfy the accepted meaning of inventorship. But that time has not yet arrived, and, if it does, it will be up to Congress to decide how, if at all, it wants to expand the scope of patent law.”

The United Kingdom Intellectual Property Office (“UKIPO”) held that “[s]ince DABUS is a machine and not a natural person … it cannot be regarded as an inventor.” The England and Wales High Court (Patents Court) agreed with the UKIPO. The court held that in theory, it might be possible for the definition of “inventor” to include both persons and things, but it would be unlikely. The court also held that DABUS, by its status as a thing and not a person, is incapable of transferring any property right to Dr. Thaler.

Some Wins – the South African Patent Office and the Federal Court of Australia 

Despite the bumps in the road, there have been some wins for DABUS.

Through the Patent Cooperation Treaty (“PCT”) filing, Dr. Thaler has obtained a South African patent for the beverage container. Note that South Africa is a non-examining jurisdiction. This means a national phase entry based on a PCT application would proceed to grant without substantive examination.

More substantially, the Federal Court of Australia held that an AI machine, such as DABUS, can be a patent inventor. Judge Beach held that:

… an artificial intelligence system can be an inventor for the purposes of the Act. First, an inventor is an agent noun; an agent can be a person or thing that invents. Second, so to hold reflects the reality in terms of many otherwise patentable inventions where it cannot sensibly be said that a human is the inventor. Third, nothing in the Act dictates the contrary conclusion.

Judge Beach says that the term “inventor” should be construed in a manner that would “promote[] technological innovation and publication and dissemination of such innovation by rewarding it, irrespective of whether the innovation is made by a human or not.” He recognizes that “computer inventorship would incentivise the development by computer scientists of creative machines, and also the development by others of the facilitation and use of the output of such machines, leading to new scientific advantages.”

Focusing on pharmaceutical research, Judge Beach suggests that a flexible and evolutionary approach to the meaning of “inventor” could significantly accelerate pharmaceutical research. Judge Beach cites the potential value of AI in pharmaceutical research, including drug and vaccine development.

With respect to ownership and transfer of property rights, Judge Beach applies the concept of possession and says:

… Dr Thaler, as the owner and controller of DABUS, would own any inventions made by DABUS, when they came into his possession. In this case, Dr Thaler apparently obtained possession of the invention through and from DABUS. And as a consequence of his possession of the invention, combined with his ownership and control of DABUS, he prima facie obtained title to the invention. By deriving possession of the invention from DABUS, Dr Thaler prima facie derived title. In this respect, title can be derived from the inventor notwithstanding that it vests ab initio other than in the inventor. That is, there is no need for the inventor ever to have owned the invention, and there is no need for title to be derived by an assignment.

More Questions Brought by AI-Generated Inventions 

We live in an era where computers are not just crunching numbers. In the pharmaceutical industry, AI has contributed to the discovery and development of drugs and vaccines. These technological advances have given rise to issues of inventorship and patent ownership, as evidenced by the DABUS patent applications. There are many other challenging questions to be answered:

• if an AI machine can be an inventor, for AI-generated inventions, how would we assess “artificial” inventiveness?
• Should there be a separate system for AI-generated inventions compared to man-made inventions?
• and the list goes on and on.

It will be interesting to see whether, over time, other patent offices will change their views to fall more in line with the Australian position as AI becomes more and more a part of our everyday lives, or whether the more traditional view that the spark of inventiveness that justifies the grant of a patent can only be exhibited by a human being will continue to be applied.

**This article was originally published by The Lawyer’s Daily a division of LexisNexis Canada Inc.