Alex Bajjon

September 2021

Background

Dr Stephen Thaller filed a number of patent applications in various jurisdictions for an AI-invented invention. As the invention was conceived by an artificial intelligence system, DABUS, Dr Thaller named DABUS as the inventor on the patent applications.

To date, the applications have been refused in numerous jursidictions including the UK and the US, as well as at the EPO.

Recap of Proceedings at the EPO

The European patent application filed by Dr Thaller was refused by the Receiving Section of the EPO on the basis that the EPC requires the inventor to be a natural person. Dr Thaller appealed this decision and oral proceedings are scheduled for 21 December 2021.

The Board of Appeal have recently issued their preliminary opinion for this case, in which they consider that an inventor must have legal capacity (as inventors have certain legal rights, for example under Articles 60 and 62 EPC, which they must be able to hold). Here, the Board indicates that the question of whether artificial intelligence has legal capacity is one for national law, rather than the EPO. It had not been argued by Dr Thaller that DABUS has legal capacity and therefore it appears that the answer to this question will not be addressed by the Board of Appeal’s decision.

While it seems that the EPO Board of Appeal would require EPC member states to recognise AI as having legal capacity before allowing AI systems to be named as inventors, we will await the Board of Appeal’s final decision on this case, which we expect to issue early next year.

South Africa

In July 2021, the South African Patent Office granted Dr Thaller’s corresponding South African patent naming DABUS as an inventor.

There is no substantive examination of South African patents and it is unclear whether the question of AI inventors was fully considered by the South African Patent Office prior to grant. It is worth noting that in South Africa, a patent can be revoked on the basis that the person who applied for the patent was not entitled to do so and this therefore may open the door for a post-grant challenge of the patent by a third-party.

Australia

In Australia, Dr Thaller’s patent application was initially rejected by the Australian Patent Office for not naming a human inventor. This decision was appealed to the Federal Court of Australia.

On appeal, the judge made a number of observations including:

• There is nothing in Australian patent law to indicate that inventor must be human (specifically, there is no equivalent to moral rights in copyright law which presumes that the inventor must be human)
• The word “inventor” is an “agent noun” and can be both a human or non-human entity (such as the words “lawnmower” or “dishwasher”)
• Naming AI as inventors reflects reality as there are many patentable inventions where it cannot be said that a human is the true inventor
• The consequence of not permitting AI inventors would be that AI inventions would not be patentable

A consequence of having an AI inventor is that it must be considered how an applicant can derive the right to be granted a patent (unlike natural persons and legal entities, AI systems are not capable of assigning their rights in a patent/an invention to a third party). On this point, the judge considered that Dr Thaller could correctly be considered the applicant for the patent by virtue of a number of mechanisms, including:

• Being the owner, programmer and operative of DABUS
• His ownership of the copyright of DABUS’ source code
• His ownership of the computer on which DABUS resides

The judge likened the ownership of an AI system to the ownership of the offspring of animals, food or crops produced by the labour and expense of the owner of the land.

Conclusions

It is yet to be seen whether this Australian Federal Court decision will be appealed further and whether any other jurisdictions will follow the approach of the Australian court.

It does however seem that there may be a number of downstream consequences of permitting AI inventors, which should be carefully considered and perhaps changed from a legislative level. If the Australian court judgement is maintained, it will be interesting to see whether the concerns of critics of the judge’s materialise in reality.

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