On 2 September 2021, the District Court for the Eastern District of Virginia affirmed a decision by the United States Patent and Trademark Office (“USPTO”) that an inventor – defined in 35 USC § 100(f) as “the individual or, if a joint invention, the individuals collectively who invented or discovered the subject matter of the invention” – must be a natural person.[i] In that regard, the Court relied on the Dictionary Act,[ii] as well as the use of personal pronouns before the term “individual” in the US Code, to conclude that Congress intended that term to have its “typical use”. While the Court acknowledged “there may come a time when artificial intelligence reaches a level of sophistication such that it might satisfy accepted meanings of inventorship”, it did not believe that time has yet arrived. That was despite the USPTO not disputing as a factual matter that DABUS, and no natural person, had invented the claimed subject matter. In any case, the Court considered it a matter for Congress to decide how inventive AI would be dealt with under patent law. This decision has been appealed to the Court of Appeals for the Federal Circuit, with oral arguments having taken place on 6 June 2022.[iii]
On 21 September 2021, a 2:1 majority of the England and Wales Court of Appeal upheld the England and Wales High Court’s decision that only a natural person can be named as an inventor on a patent and a machine is not capable of transferring rights.[iv] The majority also held Dr Thaler’s ownership of DABUS was insufficient to establish derivation of title to the claimed inventions, and that there was no rule of law in the UK that “a new intangible produced by existing tangible property is the property of the owner of the tangible property”.[v] The UK Supreme Court is currently deciding whether to accept an application for special leave to appeal the Court of Appeal’s decision.
Interestingly, while Lord Justice Birss agreed with the majority that the Patents Act 1977 (UK) (“UK Patents Act”) as drafted requires an “inventor” to be a natural person, his Lordship did not see the fact that the creator of an invention is a machine as an impediment to grant of a patent.[vi] In particular, his Lordship did not interpret the relevant sections of the UK Patents Act as necessitating an enquiry into whether a named inventor actually meets the requirement for inventorship or whether an applicant who is not an inventor is legally entitled to the invention. Rather, according to Birss LJ, the requirement to name an inventor on a UK patent application was satisfied where the applicant names who they genuinely believe to be the inventor,[vii] and a statement of how title is believed to be derived is sufficient to establish the applicant’s right to be granted a patent.[viii]
On 21 December 2021, the EPO Legal Board of Appeal also dismissed an appeal by Dr Thaler against a decision of the EPO Receiving Section.[ix] The decision, which was not published until 5 July 2022 (although it was the subject of discussion in a one-day conference hosted by the EPO on the case and inventorship under the EPC on 16 May 2022)[x] found that an “inventor” within the meaning of Article 81 of the European Patent Convention (“EPC”)[xi] must be a person with legal capacity.[xii] The Board also rejected an auxiliary request filed by Dr Thaler in which no inventor was identified but which specified that a natural person had the right to grant of a European patent by virtue of being the owner and creator of DABUS.[xiii] In that regard, the Board agreed with the finding of the Receiving Section that a machine is not capable of transferring any rights and thus Dr Thaler could not be DABUS’s successor in title within the meaning of Article 81 of the EPC.
The Board did, however, state that it “is not aware of any case law which would prevent the user or the owner of a device involved in an inventive activity to designate himself as inventor under European patent law”, and that an applicant may report an invention is AI-generated in the specification.[xiv] However, while that approach may solve the problem of lack of patentability, it is inconsistent with jurisdictions such as the US and UK where the inventor must have “conceived” of or “devised” the invention, respectively – not just be someone who owns a computer. It is also unclear how inventorship would work where the user and owner of a device are different persons or groups of persons.
A divisional previously filed in the case will allow it to proceed on this basis, namely that the owner of the inventive AI is listed as the inventor, and the AI is designated as having invented the subject matter in the specification.[xv]
On 31 March 2022, the German Federal Patent Court handed down a decision that adopted a similar solution to the EPO Legal Board of Appeal for dealing with the formality requirements for grant of a patent for an AI-generated invention.[xvi] While the Court was not prepared to interpret the term “inventor” as used in the German Patent Act in a manner that extended to non-humans in the context of the existing legislative framework, it recognised that the obligation to truthfully designate the inventor, which the court said was “undoubtedly” DABUS, was as odds with the entitlement of Dr Thaler to grant of a patent as the owner of DABUS. In recognition of that dilemma, the Court acknowledged that designation of the inventor as “Stephen L. Thaler, PhD who prompted the artificial intelligence DABUS to create the invention” – one of several options put forward by the AIP team – would be allowable, and that an applicant could note that an invention is AI-generated in the patent specification. The German Patent Office is now appealing this decision.
On 30 July 2021, the Federal Court of Australia became the first (and remains the only) court worldwide to decide that an AI can be named as an inventor on a patent.[xvii] While the issue before the Federal Court was one of statutory interpretation, Beach J’s decision recognised the broader significance of AI to the present and future of innovation and displayed a level of pragmatism so far unseen as the AIP saga unfolds globally.
In Beach J’s own words, to hold that AI can be inventor under the Patents Act 1990 (Cth) (“AU Patents Act”)“reflects the reality in terms of many otherwise patentable inventions where it cannot sensibly be said that a human is the inventor”.[xviii] Further, in a significant departure from the findings to date in other jurisdictions, his Honour also considered there to be a prima facie case that Dr Thaler derives title to the invention by virtue of his possession of DABUS, ownership of the copyright in DABUS’ source code, and his ownership and possession of the computer on which DABUS operates.[xix]
However, on 13 April 2022, an enlarged five-judge bench of the Federal Court unanimously overturned the decision at first instance, finding that only a natural person can be an inventor under Australian law, and therefore that an invention conceived solely by AI (an AI-generated invention) could not receive patent protection.[xx] Although the Full Court of the Federal Court recognised the urgency for lawmakers to consider the questions raised by AI in the context of patent law, it did not consider the legislation as currently drafted to be open to an interpretation that encompasses AI within the term “inventor”.
The High Court of Australia has now been asked to weigh in, with an application for special leave to appeal the Full Court’s decision filed on 16 May 2022.
On 31 January 2022, the New Zealand Patent Office found the application for grant of a patent by Dr Thaler to be void on the basis that the application did not identify a natural person as the inventor.[xxi] In particular, the Assistant Commissioner of Patents considered the application did not comply with s.22(1) of the Patents Act 2013 (NZ)(“NZ Patents Act”), which provides a patent for an invention may only be granted to a person who:
(a) is the inventor; or
(b) derives title to the invention from the inventor; or
(c) is the personal representative of a deceased person mentioned in paragraph (a) or (b).
The NZ Act includes a definition of the term “inventor” as meaning “the actual deviser of the invention”.[xxii] While there is no reference to natural persons in that definition, the Assistant Commissioner nonetheless considered it “intrinsic to the proper construction of the [NZ Patents] Act” that the inventor be a natural person.[xxiii] Even if DABUS could be regarded as an inventor, the Assistant Commissioner was not satisfied Dr Thaler appropriately derived title to the invention from DABUS because, as a non-human, DABUS was not capable of holding title in the first place. This decision has been appealed to the High Court of New Zealand.
Elsewhere around the world, on 19 August 2021, the Intellectual Property and Commercial Court (“IPCC”) of Taiwan upheld a decision of the Taiwanese Patent Office that an inventor must be a natural person.[xxiv] Dr Thaler’s application has also been rejected by the Korean Patent Office and Israeli Patent Office, and the Indian Patent Office recently issued a first examination report in which it stated that the application could not proceed because it does not name a person as an inventor. The decisions of the Taiwanese IPCC and Korean and Israeli Patent Offices have each been appealed.
To date, South Africa remains the only jurisdiction to grant a patent naming DABUS as an inventor.[xxv] While South Africa does not conduct substantive examination, the application passed the necessary formalities requirements for grant of a patent in that jurisdiction. In addition, the application had successfully completed preliminary substantive examination before the UKIPO.
In related news, the AIP has launched a challenge against the US Copyright Office, which refused an application to register an AI-Generated Artwork. On 14 February 2022, the Copyright Review Board affirmed the refusal to register the copyright claim in the artwork because “human authorship is a prerequisite to copyright protection in the United States”.[xxvi] An appeal has now been filed against the Copyright Office in the US District Court for the District of Washington DC.[xxvii]
[i] Thaler v. Hirshfeld, No. 1:20-cv-903 (LMB/TCB), 2021 EL 3934802 (E.D. Va. Sept. 2, 2021).
[ii] 1 USC § 8(a) provides: “In determining the meaning of any Act of Congress, or of any ruling, regulation, or interpretation of the various administrative bureaus and agencies of the United States, the words “person”, “human being”, “child”, and “individual”, shall include every infant member of the species homo sapiens who is born alive at any stage of development.”
[iii] United States Court of Appeals for the Federal Circuit, 2021-2347: Thaler v. Vidal <https://cafc.uscourts.gov/06-06-2022-2021-2347-thaler-v-vidal-audio-uploaded/>.
[iv] Thaler v Comptroller General Of Patents Trade Marks And Designs  EWCA Civ 1374.
[v] Thaler v Comptroller General Of Patents Trade Marks And Designs  EWCA Civ 1374, .
[vi] Thaler v Comptroller General Of Patents Trade Marks And Designs  EWCA Civ 1374, .
[vii] Thaler v Comptroller General Of Patents Trade Marks And Designs  EWCA Civ 1374, -.
[viii] Thaler v Comptroller General Of Patents Trade Marks And Designs  EWCA Civ 1374, .
[ix] European Patent Office, ‘Press Communiqué on decisions J 8/20 and J 9/20 of the Legal Board of Appeal’ (Web Page, 21 December 2021) <https://www.epo.org/law-practice/case-law-appeals/communications/2021/20211221.html>.
[x] European Patent Office, ‘Inventorship in patent law’(Web Page, 16 May 2022) <epo.org/news-events/events/conferences/inventorshipconference2022.html>.
[xi] Convention on the Grant of European Patents, opened for signature 5 October 1973, 1065 UNTS 199 (entered into force 7 October 1977) (“EPC”).
[xiii] European Patent Office Technical Board of Appeal decision J 8/20, 4.4.
[xii] European Patent Office Technical Board of Appeal decision J 8/20 at 4.3.1; Article 81 EPC states “The European patent application shall designate the inventor. If the applicant is not the inventor or is not the sole inventor, the designation shall contain a statement indicating the origin of the right to the European patent”.
[xiv] European Patent Office Technical Board of Appeal decision J 8/20, 4.6.6.
[xv] European Patent Office Application Number 21216024.6.
[xvi] 11 W (pat) 5/21, ‘Food Container’; unofficial English translation available at <https://www.linkedin.com/posts/malte-k%C3%B6llner-41838b22_dabus-decision-bpatg-english-translation-activity-6918193479516864513-drM_/>.
[xvii] Thaler v Commissioner of Patents  FCA 879.
[xviii] Thaler v Commissioner of Patents  FCA 879, .
[xix] Thaler v Commissioner of Patents  FCA 879, .
[xx] Commissioner of Patents v Thaler  FCAFC 62.
[xxi] Stephen L. Thaler  NZIPOPAT 2.
[xxii] Patents Act 2013 (NZ) s 5.
[xxiii] Stephen L. Thaler  NZIPOPAT 2, .
[xxiv] Thaler v. Taiwan IP Office (TIPO), 110 Xing Zhuan Su 3, Taiwan’s IPC Court.
[xxvi] United States Copyright Office Copyright Review Board, Correspondence ID 1-3ZPC6C3; SR # 1-7100387071.
[xxvii] See PacerMonitor, ‘THALER v. PERLMUTTER et al’ (Web Page)<https://www.pacermonitor.com/public/case/44763624/THALER_v_PERLMUTTER_et_al>.