The Court of Appeal has denied Dr Thaler the grant of patents
for inventions generated by DABUS, an Artificial Intelligence (AI)
machine created and owned by him .
The facts surrounding the case are known to many around the
world. This matter is an international test case advanced by Dr
Thaler and his collaborators to establish whether owners of AI
systems can obtain patents for inventions generated by those
systems. The Court of Appeal held by a two to one majority, that
the UK Patents Act 1977 provided a complete
code, under which a patent cannot be granted where the inventor
identified in the patent application is not a person. It was
accepted by Dr Thaler that a machine is not a person (as is clearly
the case). This means that, if patents are to be granted in respect
of inventions made purely by machines (as opposed to using the
machine as a tool to find inventions), there must be a change in
the law, unless the applicant inaccurately identifies a person as
an inventor in the patent applications. The Court did not decide
whether the inventor had to be a natural or a legal person.
This ruling affirms the High Court’s decision, which was itself an appeal from
the decision of the UK IPO, both denying grant of a
patent. Given the significance of the decision, it may well be
appealed to the Supreme Court. For a simple comparison, we provide
below a short summary of the chronology of main events and
decisions on Dr Thaler’s patent applications around the
world.
The present case merely addresses a very narrow point as to
whether a patent applicant, who names an AI machine as an inventor
could be granted a patent, leaving open many other interesting
questions on patentability of AI-based inventions. Some of these
are also identified in this article.
Background
Dr Stephen Thaler created an artificial intelligence machine
called DABUS (Device for the Autonomous Bootstrapping of Unified
Sentience) programmed to create inventions. As explained by Dr
Thaler, unusually (compared to many other patent applications that
uses AI as a tool), DABUS was not created to solve any particular
problem, was not trained on any special data relevant to the
present invention, and the machine rather than a person identified
the novelty and salience of the present invention. The inventions
that were subject of the patent applications do not matter for the
purposes of the issues addressed.
Dr Thaler applied for patents in respect of these machine
generated inventions before the UK IPO, the European Patent Office
(EPO) the USPTO, and other jurisdictions via the PCT route, making
it clear that the inventor was DABUS, and DABUS only, and, in the
UK case, claimed himself as the applicant by virtue of owning
DABUS.
The UK IPO rejected the patent applications. The decision was
challenged and the case then proceeded on the assumption that the
following three facts were true:
- That DABUS created the invention;
- That the inventions were patentable/potentially patentable;
and - Dr Thaler was the owner and creator of DABUS and the person who
set it up to create the inventions in this case.
Dr Thaler had refused to submit that he, as owner/controller of
an artificially intelligent machine that “invents”
something can be said to be the inventor not merely because he
considered it bad in law, but more importantly because (in moral
terms) he considered that he would illegitimately be taking credit
for an invention that was not his.
Relevant UK Patent Law
Section 7 of the Patents Act 1977 is an exhaustive code for
determining who is entitled to be granted a patent. Under this
provision, the right to be granted a patent is primarily given to
the inventor (s.7(2)(a)) or in the alternative, to the person
who has the right to stand in the place of the inventor owing to a
legal effect, be it a rule of law, any other law, or an agreement
(per s.7(2)(b) – e.g. an employer gaining the
right to the invention made by its employees) or by being a
successor in title (s.7(2)(c)).
Further, UK Patent law (s.13(2)) requires an applicant for a patent to
identify the person who is believed to be the inventor (s.13(a)) and to indicate how they derived the
right to apply for the patent if they were not the inventor (s.13(2)(b)). According to s.13(2), the failure
to do so results in the deemed withdrawal of the application.
The Court of Appeal decision
The issue before the Court was whether the requirements under
s.13(2)(a) and (b) were met.
i. Did Dr Thaler fulfil his obligations under
s.13(2)(a)?
In accordance with s.13(2)(a), the applicant must provide a
statement to the UK IPO identifying who is “believed to be the
inventor” in his application. Dr Thaler had honestly stated
that DABUS was the inventor of the invention. The question before
the Court was whether DABUS, an AI machine, could qualify as an
inventor.
The Court of Appeal reviewed the case law, history of UK patent
law, interpreted a number of provisions of the Patents Act and of
international laws, and unanimously held that the
“inventor” had to be a person within the meaning of the
Patents Act, in agreement with the decisions of the lower
tribunals. It therefore followed that a machine was legally
incapable of being an inventor under UK patent law.
Unlike the decisions below, the Court of Appeal did not
elaborate on whether the inventor could be a legal person (such as
a company) as well as a natural person (an individual person). That
point did not have to be decided because there was no debate that
DABUS was not any sort (natural or legal) of person.
The majority of the Court considered that it was not sufficient
to make a genuine statement as to who was believed to be the
inventor, but that the identified inventor had to be a person.
DABUS was not. On this basis, the requirement under s.13(2)(a) was
not met.
ii. Did Dr Thaler fulfil his obligations under
s.13(2)(b)?
In accordance with s. 13(2)(b), the applicant must indicate the
derivation of the applicant’s right to grant. The Court
considered whether the applicant had the correct legal basis to his
entitlement, in accordance with s.7.
Dr Thaler stated that he owned the machine and so he owned the
invention created by the machine. He contended that a rule of law
known as the common law doctrine of accession applied, and that
fell within s.7(2)(b). The effect of this doctrine was to give a
person who has exclusive possession of a tangible item which
produces a new tangible item exclusive possession over the new
tangible item – akin to the owner of a fruit tree being generally
regarded as owning the fruit produced by that tree.
The Court of Appeal considered that the doctrine of accession
did not apply analogously where the existing tangible property gave
rise to a new intangible property (such as intellectual property
rights) because intangibles are non-rivalrous (meaning that the
thing is capable of being consumed multiple times, unlike a
tangible item e.g. an apple, which is capable of being consumed
only once). One of the analogies given by the Court of Appeal is of
a copyright subsisting in a photograph taken by a person from a
borrowed camera. The camera owner owns the camera, but would not be
regarded as being the owner of the copyright subsisting in the
photograph.
In any event, section 7(2)(b) gives effect to a legal right of
someone other than the inventor to stand in the place of the
inventor with the right to apply for and obtain a patent, where the
inventor would otherwise be entitled to apply. Machines were
legally incapable of being an inventor, and furthermore had no
rights which the owner could claim instead of the machines. There
was therefore no rule of law which conferred Dr Thaler the right to
apply for patents created by DABUS in the circumstances.
The requirement under s.13(2)(b) was therefore not met.
iii. Application of s.13(2) resulting in deemed
withdrawal of the patent applications
The Court of Appeal by a majority therefore found that Dr Thaler
failed to comply with s.13(2). Non-compliance of s.13(2) meant that
the patent applications had to be accordingly deemed withdrawn.
Such non-compliance reinforced the fact that the patent
application fell foul of s.7 of the Patents Act which provides that
only an inventor (who is a person) or a person who has the legal
right to be granted a patent instead of the inventor (under
s.7(2)(b) or (c)) may be granted the patent.
iv. The dissenting decision
This was not a unanimous decision of the panel of three Court of
Appeal judges. Birss LJ, a recently appointed but highly regarded
and well established patent judge, agreed that the inventor had to
be a person and so not a machine. However, despite this, in his
view, that did not mean that a patent cannot be granted to Dr
Thaler.
In his view, the requirements under s.13(2) were fulfilled
simply be providing the information required honestly. Unlike the
other two judges on the panel, he considered that the purpose of
this section was simply to give the UK IPO information which will
be made public. The majority did not agree.
In Birss LJ’s view, the failure to identify a person as an
inventor did not mean that the requirements of s.13(2)(a) were not
met. It was sufficient that the applicant stated who they genuinely
believed the inventor to be. The history of UK patent law meant
that the true identity of the inventor was no longer relevant to
the question of whether a patent should be granted.
Further, Birss LJ considered that the requirements of s.13(b)
were also met, as Dr Thaler had provided the reasons for claiming
the right to be granted the patent. He considered that the UK IPO
was not required to examine whether the basis was legally sound.
There were mechanisms for rightful applicants to challenge
entitlement to the patent under the Patents Act (s.8 for pre-grant
and s.37 for post-grant). The position adopted by Birss LJ does
have a logical basis, and might be seen to reflect the reality of
the real world in a dawning AI era.
What is happening around the world?
The DABUS case has sparked much debate around the world. We set
out the main developments below. The USPTO and the EPO have so far
interpreted and applied the relevant patent laws and this has
resulted in findings by both offices that inventors of a patent had
to be a natural person. The UK Court of Appeal decision adopts the
same approach; it was firmly of the view that the inventor had to
be a person, leaving the question open as to whether it had to be a
natural person. The only jurisdiction which has ruled that an
inventor can be non-human is Australia. The Judge there considered
that patent rights should not be denied where the invention was
generated from an AI machine because to do so would be inconsistent
with promoting innovation, which underpins the objective of the
intellectual property systems. In South Africa the patents sought
were granted without the issue of the legal status of the owner
being considered in any detail.
Impact of the Court of Appeal decision and the questions that
the decision does not address
The present case merely addresses a very narrow point as to
whether the patent applicant, who names an AI machine as an
inventor can, as a matter of law, be granted a patent. The Court of
Appeal fully endorsed the previous decisions which made clear that
the function of tribunals was to apply the law as it is, not to
create the law in order to arrive at a result deemed right, no
matter how great the need to reward AI-generated inventions with
patent rights. It therefore does not provide any guidance on many
pressing IP policy questions, some of which identified below:
- Can a natural person qualify as an inventor:
- by virtue of having exhibited inventive skill in developing a
program to solve a particular problem? - by skillfully selecting data to provide to an AI machine?
- by identifying the output of a machine as inventive?
- by virtue of having exhibited inventive skill in developing a
- If any of these human contributions were to be rewarded patent
protection, what should the extent of the contribution be in
proportion to the invention as a whole? - Can a natural person qualify as an inventor by owning or
controlling an AI machine that was capable of inventing? - Should AI machines / or any other non-human be recognised as
inventors? - Should AI generated inventions be conferred a patent, or some
other form of IP right? - Should an owner of a thing be entitled to be the owner of the
intangible fruits of that thing?
It is clear from the UK Court of Appeal’s decision that the
“should” questions will require a change of law in the
UK. Subject to any appeal decision, in the meantime, and in a non
test-case scenario, applicants would be likely to list the owner or
the controller of a purely machine generated invention, at least in
the UK. However, most inventors would wish to protect their
inventions in the US where deliberately misrepresenting the
identity of the inventor could attract criminal liability.
The DABUS case may be the much needed concrete example
demonstrating the importance of considering the operation of the
intellectual property system specifically with AI-based
technological advances in mind. In response to the UKIPO’s Open consultation on
AI inventions, on 23 March 2021 the UK government acknowledged the
need to ensure that the inventorship criteria do not present a
barrier to protecting investment in AI generated innovation and
that it will consider a range of possible policy options including
legislative changes to ensure that the UK intellectual property
system supports and incentivises AI generated innovation and
development. The government’s National AI Strategy launched this week
acknowledges that an effective IP system is fundamental to the
Government’s ambition for the UK to be a ‘science
superpower’, and stated that the consultation on copyright
areas of computer generated works and text and data mining, and on
patents for AI devised inventions will be launched before the end
of the year as a next step. The government promises that the consultation will include a
focus on how to protect AI generated inventions which would
otherwise not meet the inventorship criteria.
“Read the original article on GowlingWLG.com”.
The content of this article is intended to provide a general
guide to the subject matter. Specialist advice should be sought
about your specific circumstances.
Credit: Source link
