UK Judge Upholds Refusal of DABUS Patents

By James Nurton
September 24, 2020

“In our opinion, if current patent laws do not protect AI-generated inventions, it is time these laws were reviewed.” – Professor Ryan Abbott

DABUS AI InventorIn the latest decision regarding inventions made by the DABUS artificial intelligence machine, the England & Wales High Court has upheld two decisions of the UK Intellectual Property Office (UKIPO) deeming the UK patent applications to be withdrawn.

In a judgment on September 21, Mr Justice Marcus Smith found that all the grounds of appeal filed by the applicant, Dr Thaler, must be dismissed. (Thaler v The Comptroller-General of Patents, Designs And Trade Marks [2020] EWHC 2412 (Pat).)

As previously reported by IPWatchdog, the patent applications (for a fractal container and a neural flame) have been filed in many jurisdictions. The applicant claims that they are the autonomous output of the DABUS machine. Like the UKIPO, the EPO and USPTO have published decisions refusing to accept them.

Machine Not Envisaged by Patents Act

In the UK, the IP Office ruled that naming a machine as an inventor did not meet the requirement in the Patents Act 1977 that a natural person must be identified as the inventor. The Office was also not satisfied that Dr. Thaler had derived the right to apply for the patent by virtue of his ownership of DABUS.

Appealing that decision, Dr Thaler argued that (1) he had not received an impartial hearing based on text in the IPO’s Formalities Manual; (2) the UKIPO Hearing Officer had misdirected himself and (3) he had illegitimately been denied a right.

The first two arguments were dealt with briefly. According to the judge, the third argument concerns who can apply for a patent under Section 7 of the Act. He said it was common ground that DABUS is not a person (natural or legal) and cannot make an application for a patent.

Moreover, he found that, whatever the meaning of the term “inventor”, a patent can only be granted to a person, because only a person can hold property and the Patents Act specifically refers to the grant of a patent to a person, and to a person being a transferee.

The judge said that to define “inventor” to include both persons and things would be “an unlikely construction of the 1977 Act,” and he rejected it. This did not mean that DABUS is not itself capable of an inventive concept, but it cannot be named as the inventor within the meaning of the Act.

He also found that, because it is not a person, DABUS is not able to transfer its property (i.e. the rights to the invention) to Dr. Thaler or to anyone else: “The problem that he [Thaler] has is that there is nothing to be transferred to him and nobody capable of transferring it.” And the law could not support the applicant’s argument that he obtained the right to apply for the patent by virtue of his ownership of DABUS.

Does Patent Law Need to Change?

IPWatchdog reached out to Professor Ryan Abbott of the Artificial Inventor Project (which coordinates the DABUS applications), who said: “The UKIPO accepted DABUS as the actual deviser of the inventions, but if that designation is impermissible under the Patents Act 1997, then patent law will fail to provide protection for a growing number of inventions that lack a traditional human inventor.”

The UKIPO, as well as the USPTO and WIPO, have launched consultations on some of the policy issues raised. The UKIPO consultation refers to the first instance decision in the DABUS case, saying: “The UK hearing officer found that the definition of inventor in the Act was pivotal. They commented that there should be a debate on patent law being fit for purpose with the increasing likelihood of AI in the invention process.” Abbott welcomed the consultations, saying: “In our opinion, if current patent laws do not protect AI-generated inventions, it is time these laws were reviewed.”

In a postscript to the judgment, the judge stressed: “I in no way regard the argument that the owner/controller of an artificially intelligent machine is the ‘actual deviser of the invention’ as an improper one. Whether the argument succeeds or not is a different question and not one for this appeal: but it would be wrong to regard this judgment as discouraging an applicant from at least advancing the contention, if so advised.”

However, Abbott said: “We disagree with this approach because we believe it would allow people to take credit for work they haven’t done and devalue human inventorship, and it would fail to inform the public of an invention’s origin.”

Dr. Thaler can now apply to appeal the decision to the Court of Appeal.

The Author

James Nurton

James Nurton is a freelance journalist and editor, based in London, United Kingdom. He was previously editor of Managing Intellectual Property magazine and has worked on publications and events for AIPPI, AIPLA, INTA, WIPO, the EPO and EUIPO. He is editorial consultant to MARQUES and a partner of Lextel, which provides editorial and thought leadership services to law firms.

For more information or to contact James, visit his Firm Profile Page.

Warning & Disclaimer: The pages, articles and comments on IPWatchdog.com do not constitute legal advice, nor do they create any attorney-client relationship. The articles published express the personal opinion and views of the author as of the time of publication and should not be attributed to the author’s employer, clients or the sponsors of IPWatchdog.com. Read more.

Discuss this

There are currently 3 Comments comments. Join the discussion.

  1. Pro Say September 24, 2020 9:30 pm

    Don’t look now, but R2D2, C3PO, The Iron Giant, Robbie the Robot, Data, RoboCop, and Hal are putting together one heck of a powerful consortium with all their robot buddies to fight against this discrimination.

    They’re mad as h— and not going to take it anymore.

    Not. Anymore.

  2. Edward C Kwok September 25, 2020 6:08 am

    The British court made a bit too complicated than it needed to be. In the US, it can simply be disposed of under the doctrine of standing. The USPTO should not even have reached the issue of inventorship. To allow the case actually to move through the courts to get a resolution, the USPTO should have refused the application on the basis that Mr. Thaler is not qualified to be an Applicant. Reaching the issue of inventorship, Mr. Thaler’s appeal now faces the issue of standing in court. If the machine can be an inventor, being able to assign its rights or contractually obligate itself to assign its rights, why can’t the machine sue in his own name? Mr. Thaler has no standing to appeal on the machine’s behalf.

    Regarding standing issue in the USPTO. The machine cannot have the capacity to assign or to incur the obligation to assign, both acts requiring both the ability and the act to contract, so that Mr. Thaler can only claim to be a “person who otherwise shows sufficient proprietary interest” providing “the pertinent facts and a showing that such action is appropriate to preserve the rights of the parties.” In that instance, the USPTO’s rejection would allow Mr. Thaler to file suit in his name and to allow the court to settle the inventorship issue.

  3. Anon September 25, 2020 4:20 pm

    Mr. Kwok,

    I do not think that your view is as strong as you think it to be.

    Owner of the machine is the asserted ‘standing’ or ‘right to be applicant,’ and since even IF the AI has ‘sentience enough’ for the legal proposition of ‘inventor,’ is does NOT follow that other sentience aspects vis a vis “contract” or “filing suit” follow or must be connected.

    You touch on separate legal items as if you can easily co-mingle them.

    Not so fast.

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