• Summary

In 2018, two provisional patent applications were filed with the United Kingdom Intellectual Property Office (UKIPO) for inventions generated by an AI system named DABUS under circumstances such that had DABUS been a natural person it would have been the sole inventor (at least under US and UK law). The applicant and owner of the patent applications was the developer, user, and owner of DABUS, Dr. Stephen Thaler. 

The applications were filed first with the UKIPO because the UKIPO can conduct a preliminary substantive examination (e.g., novelty, inventive step, industrial applicability) on provisional applications before addressing formalities such as inventorship. Both applications successfully passed preliminary substantive examination, meaning they were found to be new, non-obvious, and useful such that a patent would ordinarily then be granted. 

After passing substantive examination, the applications were updated to designate an AI system as the inventor (but not the owner) of the applications. This was done to be transparent and candid about the manner in which the inventions were made. In jursidictions such as the United States and Canada, misrepresentations about inventorship can result in criminal penalties.

Our applications were not the first instance in which someone had claimed an AI had generated a patentable invention, but they were the first instance in which this was proactively disclosed during the application process. As an AI system, DABUS is not a natural or legal person and does not have any rights, including any property rights, but most inventors do not own their patents. Most patents are owned by non-natural persons such as corporations, which commonly own patents by virtue of employing inventors. We argued that DABUS’s owner was entitled to own property made by DABUS by basic rules of property law such as the doctrine of “accession” or fruit-of-the-tree, namely that someone owns property made by their property. This applies to contexts as varied as someone owning fruit from their tree, calves from their cows, physical paintings from a 3D printer, bitcoin from their digital mining systems, and goodwill associated with a business. 

It was also argued that allowing DABUS’s owner to patent DABUS’s inventions was consistent with the purpose of patent law, which is intended to incentivize invention, disclosure of confidential information, and commercialization of inventions. Allowing patents on AI-generated inventions will encourage the development and use of inventive AI systems that will benefit the public by resulting in more innovation, encourage the disclosure of AI-output that may otherwise be kept confidential absent patent protection, and promote commercialization of AI-generated inventions. In the life sciences, for example, the cost to bring a new medicine to market is primarily associated with the clinical testing needed to ensure a new drug is safe and effective, rather than the initial discovery of the drug. Designating the AI as the inventor was done to promote transparency, fairness, and efficient allocation of ownership. It would not be unfair to an AI to take credit for its work, but it would be unfair to other human inventors for someone to take credit for inventive activity they did not perform. 

In 2019, the applications were combined and filed as a “international” PCT application to the World Intellectual Property Organization where DABUS was listed as the inventor of the combined application and Dr. Thaler is listed as the application’s owner. From this single PCT application, the applications were ultimately filed in a total of 18 jurisdictions around the world. 

These filings have had different outcomes, part of which is due to the lack of international harmonization regarding inventorship. Some jurisdictions, such as Israel and Austria, do not require an inventor to be disclosed in applications. Some jurisdictions, such as Cypress and Monaco (both European Patent Office Member States) have reported they allow corporate inventorship. As explored further below, different jurisdictions can have very different standards for what someone, or something, needs to do to be designated an inventor (e.g., conception/devising vs causal). 

The first patent was issued in 2021 in South Africa, which lists the inventor as DABUS and the patent owner as Dr. Thaler. South Africa does not perform substantive patent examination, but does perform formalities examination and inventorship is a formalities matter. 

A week later, Justice Beach in the Federal Court of Australia held that Australian patent law allowed patents on AI-generated inventions, and AI inventorship, and that at least in the present case the AI’s owner had the clearest claim of entitlement. This decision was reversed on en banc appeal (an appeal to the same court with additional judges), and the High Court declined to accept a discretionary appeal. 

In 2022, the United States Federal Circuit upheld a rejection of the applications on the basis that an inventor under US patent law is an individual, which it held meant a natural person in the context of the Patent Act. Under U.S. patent law, an inventor must have conceived of an invention. The U.S. Supreme Court denied certiorari (denied a discretionary appeal). 

To date, the applications were also denied without the possibility of further appeal in Taiwan and Saudi Arabia (after first being accepted).

In 2024, the highest German civil court resolved a circuit split among appeal courts in holding that AI-generated inventions were patentable. The court held there must be a human inventor, but that unlike US law, for example, a human inventor need only cause an invention to be made. The patent application has now been sent back to the German patent office for further examination.

The European Patent Office initially refused the application and this refusal was initially upheld by the Legal Board of Appeal which held that an AI could not be listed as an inventor, but that there was no reason why the user or owner of an AI system could not designate themselves as an inventor. The applicant subsequently pursued this strategy with a divisional application, which has now been denied by the formalities division and is pending appeal to the Legal Board of Appeal again. 

To date, patent offices in Japan, Canada, Republic of Korea, China, New Zealand, Brazil, and Switzerland have rejected the applications and these rejections are under appeal either within patent offices or before local courts. 

In India and Singapore, the application is pending initial examination.

Below, each jurisdiction in which the applications have been filed is listed together with corresponding application numbers, as well as case citations together with judicial opinions where available. The jurisdictions are divided into those where the applications have been: 1) granted (South Africa), 2) published (PCT/WIPO), 3) denied with appeals pending (UK, Canada, EPO, Germany, Israel, Republic of Korea, Japan, New Zealand, and China), 4) denied without further possibility of appeal (USA, Australia, Saudi Arabia, and Taiwan), and 5) pending examination or pending internal appeals with local patent offices (Brazil, Switzerland, India, Singapore).