Artificial Intelligence Machine, can it be granted a patent for its own invention?Demystifying grant of patent to Artificial Intelligence Machine

England and Wales High Court (Patents Court): Marcus Smith, J. explained exhaustively whether an ‘Artificial Intelligence Machine’ DABUS can be categorized as an inventor and granted patent or not.

“merely inventing something does not result in a patent being granted to the inventor.”

Appellant had filed two applications in his own name, Stephen Thaler.

Request for Grant forms (Patent Form 1) accompanying the application s stated that Dr Thaler was not an inventor of the inventions specified in the applications.

In the present matter, Dr Thaler was notified by two letters from the Intellectual Property Office that he would need to file a statement of inventorship and right of grant to a patent within 16 months of the filing date as per Section 13 of the Patents Act, 1977.

Dr Thaler filed the statements of inventorship on separate Patent Forms for the applications.

Inventor: An Artificial Intelligence Machine?

Patent form 7s and a letter that accompanied it stated that the inventor was the artificial intelligence machine called DABUS and that Dr Thaler had acquired the right to grant of the patents in question by “ownership of the creativity machine DABUS”.

Basis for applications by Dr Thaler

Form 7s in relation to DABUS stated that,

Inventorship should not be restricted to natural persons. A machine which would meet inventorship criteria if a natural person should qualify as an inventor.

An “autonomous machine invention” should be assigned to the owner of the machine.

If a machine cannot be an inventor, the first person to recognize the inventive nature of autonomous machine input may qualify as an inventor.

Bench found Dr Thaler’s reliance on Section 13 of the Patents Act 1977 confusing and difficult to follow.

The statutory process for the application for and grant of a patent proceeds on the basis that certain statements (specifically as regards the identity of the inventor and any chain of title from the inventor to the actual applicant) are not necessarily examined or adjudicated upon during the course of the application process. The basis for this approach derives from Section 7(4) of the Patents Act 1977, which provides for a presumption that an applicant (or applicants) for a patent shall be taken to be entitled under Section 7(2).

Thus, the Bench opined that, Dr Thaler’s contention that Section 13 of the Patents Act 1977 was dispositive of his right to be granted a patent without reference to the provisions of Section 7 was fundamentally misconceived and wrong.

Further, the Court noted that DABUS was not a person, whether natural or legal. Hence, it was clear that DABUS cannot make an application for a patent, whether by itself or jointly with another.

Since Dr Thaler was the applicant in the present matter, the requirements of Section 7(1) were completed.

Can a patent be only granted to a person?

In view of the Court, one thing was clear from the statutory scheme in the Patents Act, 1977 that – whatever the meaning of the term “inventor” – a patent can only be granted to a person.

Reasons:

  1. First, and most fundamentally, only a person can hold property and an invention, an application for the grant of a patent and the patent itself are all property rights. Were the 1977 Act to contemplate a thing owning another thing, then Court would expect extremely clear language to be used in the Act to compel such a conclusion.
  2. The language of the Patents Act 1977 makes clear that the holder of a patent must be a person.

Whether Dr Thaler falls within any of the three classes as defined in Section 7(2) as Class (a), Class (b) and Class (c), he being the person making the application?

It was observed that Dr Thaler positively asserted that DABUS was the inventor and denied that status for himself.

Inevitable reading suggests that an “inventor” is a person.

DABUS cannot be an inventor within the meaning of the 1977 Act, simply because DABUS is not a person.

In Court’s opinion, Dr Thaler’s contention he was entitled to the grant of patents pursuant to the Application because he falls within one Class (b) or Class (c) was hopeless and fails, for the following reasons:

  1. Dr Thaler has abjured the status of inventor. He says DABUS is the inventor, whilst conceding that DABUS is not a person. Even if Court accepted that DABUS was capable of being an “inventor” – which, for the reasons Court has given, it does not – Dr Thaler’s application would be hopeless, because DABUS would – by reason of its status as a thing and not a person – be incapable of conveying any property to Dr Thaler. In short, the ability to transfer, which DABUS lacks, is fatal to Dr Thaler’s contentions. The same point can be put in a different way: because DABUS is a thing, it cannot even hold property, let alone transfer it.
  2. Dr Thaler is a person quite capable of being the transferee of a property right. The problem that he has is that there is nothing to be transferred to him and nobody capable of transferring it. This difficulty was highlighted in Dr Thaler’s inability to identify any mechanism or transaction (whether within Section 7(2) (b) or (c) or otherwise) whereby rights could pass to him. The best that Dr Thaler could do was to rely on his ownership and control of DABUS, which for the purposes of this appeal Court was prepared to accept.

“the owner of a thing is owner of the fruits of that thing. Thus, the owner of a fruit tree will generally own the fruit produced by that tree.”

A patent must be applied for by a person.

Bench held that simply because DABUS has invented something and Dr thaler owns DABUS, Dr Thaler will not be entitled to the grant of patent.

Conclusion

In view of the above discussion, the appeal was dismissed. [Stephen L. Thaler v. Comptroller-General of Patents, Designs and Trade Marks, [2020] EWHC 2412 (Pat), decided on 15-07-2020]

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