Technology advances make it harder for our current legal frameworks and systems to keep up. Many discussions have been triggered by the development of artificial intelligence (AI), especially in the area of intellectual property rights (IPR). I find it interesting to wonder if an AI can be identified as an inventor for the purpose of obtaining a patent. A food container and Devices and Methods for Attracting Enhanced Attention are two innovative products that Dr. Stephen Thaler autonomously conceived using an AI he called DABUS (Device for the Autonomous Bootstrapping of Unified Sentience).

Dr. Thaler initiated a significant debate among intellectual property enthusiasts and high court authorities when she filed patent applications with various patent offices across the world, naming DABUS as the inventor. This paper aims to investigate the decisions rendered by pertinent authorities in various jurisdictions and how these court decisions are influencing our viewpoints on the subject and forming the developing field of AI-Inventorship jurisprudence.

Australia  Federal Court - Commissioner of Patents vs Thaler

Citation: [2022] FCAFC 62  Decided on 13 April 2022

Case Background
Dr. Thaler named "DABUS" as the inventor in his patent application, stating it was autonomously generated by artificial intelligence. IP Australia held that the application was incomplete, citing regulation 3.2C requiring a natural person to be identified as the inventor.

Decision of IP Australia
Dr. S D Barker, the Deputy Commissioner of Patents, while considering the same question, agreed with IP Australia, citing Inconsistencies in the application with the Patents Act and Regulations, Absence of a clear definition of €œINVENTOR€ in the Patents Act and the lack of support from other provisions within the Act.

Judicial Review
On the other hand, the primary judge overturned the Deputy Commissioner's ruling in the judicial review, ruling that an artificial intelligence system could be recognized as an inventor under the Patents Act.

Decision in Appeal
Afterwards, the Commissioner of Patents filed an appeal, citing factual errors and misreading of legal provisions (Section 15, Patents Act and Regulation 3.2C(2)(aa)) and factual errors. Whether an artificial intelligence device qualifies as an "inventor" under current law was the main legal issue raised by the appeal.

The Deputy Commissioner's orders were upheld, and the primary judge's decision was reversed.

The court determined that DABUS cannot be regarded as the inventor because it is an AI based on the following factors:

1. Regulation 3.2C(2)(AA): In accordance with the legal framework that grants inventorship to natural persons who participate in the creation of an invention, this regulation emphasizes the distinction between human inventors and non-human entities, including AI.
2. Section 15(1)(A), Patents Act: This section states that only the inventor is eligible to receive a patent.
3. Doctrine of Natural Person: According to the doctrine, law assumes that inventions originate only from the imaginative faculties of natural persons.
4. Entitlement to Patent: The only people who can obtain a patent are those who either provide or contribute the innovative idea.
5. Recognition for Humanity Ingenuity: The purpose of patents is to incentivize and recognize human ingenuity.
6. Legislative History: The court looked at the history of patent law in Australia, which supported the interpretation that patents should be granted to natural individuals.

USA: Court of Appeals for the Federal Circuit  Stephen Thaler vs Katherine Vidal under Secretary of Commerce for IP and Director of USPTO  Citation: 43 F.4th 1207 (Fed. Cir. 2022)  Decided on 5 August 2022

Case Background
Thaler claimed that DABUS, an AI system, was the true inventor of the inventions he sought to patent. He stated this from the outset, indicating that he did not conceive these inventions himself but rather, they were generated by DABUS. Thaler took an oath on behalf of DABUS and identified DABUS as the inventor when filing with the US Patent and Trademark Office (USPTO). He also attempted to assign himself all of DABUS' rights as an inventor.

Decision of USPTO
Thaler's application was deemed incomplete by the USPTO due to the absence of a legitimate human inventor's name. Thaler was made aware of this shortcoming by the USPTO. Using his declaration of inventorship, Thaler then filed a request to the USPTO Director asking for the notices to be withdrawn. His petition was denied by the USPTO, which claimed that only natural people, not made-up things like machines, could be inventors. Thaler asked the USPTO for reconsideration, but this request was also turned down.

Judicial Review
Using the Administrative Procedure Act, Thaler then sought judicial review of the ruling. The US District Court for the Eastern District of Virginia received Thaler's challenge. Through summary judgment, the court ruled in favor of the USPTO. It held that an inventor had to be an individual, reading the statute's definition of "individual" as a natural person.

Decision in Appeal
Thaler filed an appeal before the US Court of Appeals for the Federal Circuit. The issue under consideration in the appeal was whether an artificial intelligence (AI) software system can qualify as an "inventor" under the Patent Act. Initially, the court considered that addressing the question might require a complex analysis or a deep examination of legal concepts. However, rather than delving into such complexities, the court focused solely on interpreting the term "inventor" as defined in the statute. The court supported the decisions made by the United States Patent and Trademark Office (USPTO) based on the following considerations:

1. Interpretation of "INDIVIDUAL" in statutes: The Supreme Court ruled that "individual" generally refers to a human being. Until there is convincing evidence that Congress intended a different understanding, this literal interpretation is correct. The Patent Act contains no indication that Congress intended to deviate from this accepted interpretation. Conversely, other provisions of the Patent Act bolster the notion that the term "individual" in the Act refers exclusively to human beings.
    
2. Requirement of oath or declaration by inventors: Unless they are deceased, incapable, or unavailable, inventors are required by the Patent Act to furnish an oath or declaration. This statement states that the person believes the invention described in the application was created by them alone, either as a sole inventor or in collaboration with another person. Although it isn't discussed here, there isn't any evidence in our archives to support the idea that an AI system can form beliefs. The fact that Thaler personally provided the necessary statements-ostensibly on behalf of the AI system DABUS-makes this clear.
    
3. Thaler's argument was rejected based on literal interpretation of the term "whoever" in the relevant section of the Patent Act: Thaler directed the court's focus to the term "whoever" in Section 101 of the Patent Act, which stipulates that whoever invents or discovers something new and useful can obtain a patent for it. He urged the court to consider this in evaluating whether the term "inventor" encompasses AI. However, the court ruled that though an AI will qualify under this section, patents must also meet the definition of "inventor". Thaler then argued that Section 271, which outlines what constitutes patent infringement, includes "whoever," implying that corporations and other non-human entities can infringe patents. However, this argument failed because although it discusses infringement by non-humans, it does not address whether non-humans can be inventors.
    
4. AI software program claim disproved: Thaler claimed that AI software programs should qualify as inventors on the basis of Section 103 because patentability should not depend on how the invention was made. However, Section 103, which discusses patentability, does not address inventorship but rather focuses on whether an invention is obvious, even if it was discovered through routine testing or experimentation.

United Kingdom: Court of Appeal of England and Wales  Dr. Stephen Thaler vs Comptroller General of Patents, Trade Marks and Designs  Citation: [2021] EWCA CIV 1374  Decided on 20 December, 2023

Case Background:
On October 17, 2018, Stephen Thaler filed a patent application for a food container. On November 7, 2018, he filed another patent application for devices and techniques to draw more attention. On July 24, 2019, DABUS was named as the inventor in the inventorship filing. The UK Intellectual Property Office (UKIPO) responded, however, on August 8, 2019, claiming that Thaler had violated section 13(2) of the 1977 Act, which requires him to identify the inventor and provide evidence of how he obtained his rights from that person. Later on, on August 28, 2019, Thaler filed a form in which he claimed that DABUS was the only one who came up with the invention and that no other person was responsible.

Decision of UKIPO:
On November 14, 2019, during the application hearing, Mr. Huw Jones, Deputy Director of UKIPO, made a decision on behalf of the controller. He came to his conclusion against Thaler on two grounds: first, he failed to provide a sufficient justification for his right to apply for the patents pertaining to DABUS; and second, he failed to show that DABUS was not a person and hence qualified as an inventor. The decision against Dr. Thaler was made on November 14, 2019, during the hearing of the aforementioned application, by Mr. HUW Jones, Deputy Director, UKIPO, acting on behalf of the controller. DABUS was found not to be a person and therefore was not qualified to be an inventor. The second is that since Dr. Thaler did not present a convincing justification for the right, he was not qualified to apply for the patents for DABUS.

Decision of High Court:
Thaler appealed this decision to the High Court, which upheld UKIPO's decision on the same grounds.

Decision of Court of Appeal of England and Wales:
Subsequently, Thaler appealed to the Court of Appeal, invoking provision of "other compelling reason€, on following grounds:

1. Definition of "Inventor" under the 1977 Patent Act: Thaler's first ground was whether the 1977 Patent Act necessitates that an inventor must be a person. The bench expounded on the definition of "inventor," stating that the 1977 act designates the person who actually conceived the invention as the "inventor." Even though they are now capable of producing inventions, machines are not recognized as persons for the purposes of the Act and are not regarded as inventors.
    
2. Understanding of Section 13 of the Patent Act, 1977 with respect to AI: The second ground of appeal concerned Section 13 of the Patent Act 1977 and its function. The bench clarified that the purpose of Section 13 was to put the Banks Committee's recommendations into practice by removing obstacles to an applicant's eligibility and streamlining the application procedure. All that is needed is for the applicant to state who they genuinely think is the inventor and explain how they came to obtain title. In Thaler's case, however, there was no justification for the applicant's eligibility to apply even though the inventors were only loosely identified.
    
3. Appropriate response to Dr. Thaler's submission under Section 13(2): The third ground of appeal pertained to the appropriate response to the information provided by Dr. Thaler under Section 13(2), Patents Act. The ruling upheld Dr. Thaler's compliance with the law during the patent application procedure. This is unaffected by the lack of a named inventor, particularly if the applicant honestly thinks there isn't one. The bench found Dr. Thaler's claim that he owns and runs DABUS, the invention-generating machine, to be sufficient justification for his patent rights. If his claim is contested, it can be done so by following the proper legal procedures.
    
4. Policy Considerations:
   The judgment noted that while there may not be anyone with a stronger claim to the patents, the system is designed in a way that Dr. Thaler's claim may never face challenge, reflecting intentional policy decisions. Additionally, allowing the Comptroller to assess claims of derivation could introduce complexities and potential misuse of the patent system, highlighting inconsistencies in the system's evaluation approach.
    
5. Decision of UK Supreme Court:
   The appeal was rejected by the UK Supreme Court, which upheld the Comptroller and Court of Appeal's rulings without identifying any mistakes.

The court considered three significant issues:

1. Whether the scope and meaning of the term €œinventor€ in the 1977 Act extends to a machine such as DABUS?
   The interpretation of the term "inventor" under the 1977 Act was deliberated, specifically regarding whether it encompasses entities like DABUS, a machine. The Comptroller's determination that DABUS does not qualify as an inventor, as it lacks personhood and did not devise any inventions described in the patent applications, was upheld.
    
2. Was Dr Thaler nevertheless the owner of any invention in any technical advance made by DABUS and entitled to apply for and obtain a patent in respect of it?
   Despite Dr. Thaler's claim of ownership over any technical advances made by DABUS, the legal doctrine of accession does not grant him the right to apply for patents for such developments. Consequently, Dr. Thaler has never possessed the right to obtain patents under the 1977 Act for the subject matter described in the applications.
    
3. Was the Hearing Officer entitled to hold that the applications would be taken to be withdrawn?
   The Hearing Officer's decision that the applications would be considered withdrawn was upheld. This outcome is not a new criterion for patentability or a novel ground for rejecting applications. Instead, it is the prescribed consequence under section 13(2) of the Act if the applicant fails to submit a statement identifying the inventor(s) within the specified period. In this case, where the applicant is not the inventor, failure to indicate the derivation of the right to the patent leads to the applications being deemed withdrawn.

South African Patent Office
The South African Companies and Intellectual Property Commission (CIPC) accepted Dr. Thaler's patent application in June 2021, and it was accepted. This was a historic moment because it was the first time an AI was recognized as an inventor and granted a patent. It's crucial to remember that, in contrast to the US or India, South Africa is a non-examining nation, which means that patent applications filed there are not carefully reviewed for patentability requirements. Furthermore, inventors are not required by the South African Patent Office to reveal prior art.

Because of this, patent applications in South Africa are usually accepted without a careful analysis of their patentability, provided they satisfy formal requirements. Even though the patent office made a mistake in granting the patent, it is still enforceable in the relevant jurisdiction. But it can be contested by someone else and declared void if the opposite is demonstrated. Stephen Thaler can take advantage of DABUS's status up until that point. However, it may be problematic to use this decision as a basis for understanding jurisprudence because it is illogical and ignores generally accepted reasoning.

European Patent Office
On October 17 and November 7, 2018, Thaler filed the patent applications with the European Patent Office. On January 27, 2020, the EPO, however, rejected these applications, stating that the inventor was actually an artificial intelligence system called DABUS, not a human. The European Patent Convention's Article 81 and Rule 19(1) were the basis for this decision. On December 21, 2021, the EPO Board of Appeal upheld the initial decision in response to an appeal filed by Thaler. The Board affirmed that an inventor must be a person with legal capacity as defined by the European Patent Convention, which is consistent with the common interpretation of the term "inventor."

New Zealand Intellectual Property Office
On January 31, 2022, the Intellectual Property Office of New Zealand ruled that Stephen Thaler's patent application was invalid due to its failure to identify a human inventor. It concluded that, in order to comply with the Patents Act of 2013, a real person, rather than an artificial intelligence such as DABUS, should be acknowledged as the inventor of the invention. This decision was in line with other patent offices' earlier decisions.

Conclusion
On the initial justification that only humans should be acknowledged as inventors, a number of patent offices€"with the exception of South Africa€"rejected patent claims involving artificial intelligence (AI). The highest courts have consistently maintained that only humans are considered inventors, citing no room for doubt in this regard. €¢The interpretation of current laws, as opposed to theoretical ideas about what they ought to include, served as the foundation for judicial decisions. The idea that AI is not qualified to be recognized as an inventor was reinforced by judicial bodies interpreting pertinent statutes based on the literal definitions of terms like "person" and "individual." A uniform legal framework is provided by this interpretation, which is firmly established in developed jurisdictions.

A large body of legal precedent pertaining to the patentability of inventions produced by AI has been established by different jurisdictions, with the consensus being that AI is not an inventor in and of itself. Instead, subject to standard patentability criteria, it is the humans using AI that are credited with creating new inventions. The underlying goals of patent law, which are to grant exclusive rights, reveal inventions, and promote innovation, are in line with this legal framework.

As AI is only a tool and does not possess independent cognitive abilities, granting patents to AI poses significant challenges. As a result, patents for tools that depend on outside guidance are not worth much. An AI that is eventually managed by a person who trained it nevertheless retains human control even if it is granted a patent. Thus, giving the patent to a human being directly makes more sense. Because a tool lacks the capacity for independent thought or the wisdom to discern actions, the idea of granting a patent to a tool alone has never been enforced before. Although it sounds interesting, there is no scientific evidence to support the idea of giving an AI the only patent.

It is also less useful to patent AI because it cannot independently enter into contracts or communicate with humans. An inventor who is human can interact with a variety of stakeholders and explain how their invention will give them a competitive edge in the marketplace. Because AI is unable to independently interpret and react to cues from human communication, he can demonstrate the use case of his invention and instruct the stakeholders on how to use it optimally. €¢In addition, since AI does not have the agency to utilize patents, giving it patents creates uncertainty about licensing and assignment procedures, making the grants absurd and creating doubts about their consequences.

Protecting AI with patents also calls into question the veracity and accuracy of the data offered. This is a result of the inherent risk that content created by AI systems could be factually inaccurate or even fake. There are concerns regarding the accuracy of the data generated by these systems because historical examples have shown that AI is capable of producing incorrect or deceptive prompts.

Artificial intelligence (AI) has the potential to produce significant challenges in the context of patents, where precise and accurate documentation of inventions is crucial. Concerns have been raised about the possibility of legal disputes, damage to the integrity of the patent system, and hindrance to innovation if patents are granted based on inaccurate or incomplete information from AI systems. Therefore, it is crucial to confirm the veracity and correctness of AI-generated content before thinking about awarding patents for ideas that are exclusively based on AI.

The legal debate focused more on whether AI can be acknowledged as a single inventor than on whether AI can be regarded as a joint inventor when a human and an AI system work together. Although it was not the main focus of the cases under consideration, this distinction is still relevant. Policy decisions, legislative changes, and judicial interpretations resulting from cases arising from these regulatory frameworks are expected to further clarify the ongoing debate surrounding AI's role in patenting.