On April 22, 2020, the United States Patent and Trademarks Office (the “USPTO”) issued an order refusing inventorship of a patent application to DABUS, an Artificial Intelligence (AI) machine. This decision, which broadly appears to align with the position being taken in Europe and the United Kingdom with regard to the same invention, is likely to have a significant impact on the future of patenting, at least until there are statutory amendments to the contrary, or until it gets overturned for any reason.
An application for grant of a patent was filed before the USPTO on July 29, 2019. The application data sheet (ADS) accompanying the application listed a single inventor with the given name “DABUS” and the family name “Invention generated by artificial intelligence”. The ADS further identified the applicant as the Assignee “Stephen L. Thaler”. Also, the “Statement of Inventorship” for the application provided that the invention was conceived by a “creativity machine” DABUS and it should be named as the inventor in the application.
On perusal of the documents, the USPTO issued a “Notice to File Missing Parts” and indicated that the ADS “does not identify each inventor by his or her legal name”. That is to say, the application failed to identify the inventor by his/her legal name. A petition was subsequently filed by Thaler requesting supervisory review and vacating the said Notice for being unwarranted and/or void.
Thaler (the petitioner) asserted that the invention was generated by the AI machine and this “creativity machine” was programmed as a series of neural networks that have been trained with general information in the field of endeavour to independently create the invention. The petitioner further asserted that it was the machine, not a person, which recognized the novelty and salience of the invention in question. The petitioner contended that inventorship should not be limited to natural persons and, therefore, the naming of DABUS as the inventor in the application was proper.
The USPTO took the position that inventorship in the US is limited to natural persons. The USPTO held that the wording used in the statutes provides basis for this reasoning. For instance, 35 U.S.C. §§ 100(f) provides “The term ‘inventor’ means the individual or, if a joint invention, the individuals collectively who invented or discovered the subject matter of the invention.” Further, 35 U.S.C. §§ 100(g) provides “The terms ‘joint inventor’ and ‘coinventor’ mean any 1 of the individuals who invented or discovered the subject matter of a joint invention.” Also, 35 U.S.C. § 101 provides “Whoever invents or discovers … may obtain a patent therefor, subject to the conditions and requirements of this title.” The USPTO asserted that the words like “individual” and “whoever” in the context of inventorship, imply natural persons. In addition, 35 U.S.C. § 115(b) requires that the oath or declaration be signed by an individual when that individual believes “himself or herself” to be an inventor of the claimed invention.
In light of the statutes and the various Federal Circuit decisions, the USPTO held that interpreting “inventor” broadly to encompass machines would contradict the plain reading of the statutes that refer to persons and individuals. Accordingly, the USPTO has held that the application does not comply with 35 U.S.C. § 115(a) requiring that an application include, or be amended to include, the name of the inventor for any invention claimed in the application.
Position in Europe and United Kingdom
The Assignee also filed patent applications in Europe and the United Kingdom, identifying DABUS as the inventor. Similar to the US, the European Patent Office (the “EPO”) and the UK Patent Office (the “UKIPO”) did not accept ‘DABUS’ as an inventor. While the EPO and the UKIPO are interpreting and enforcing their own respective laws as they apply to the applications before them, both the offices are of the opinion that patent rights require a legal personality in order to be exercised, which is something that an AI machine lacks.
Scenario in India
India is witnessing a growth in the number of start-ups, most of which are involved in the development of AI. However, there are no guidelines in India that can be applied to AI-related patent applications. At present, the guidelines for Computer Related Inventions (CRIs) encompass AI technology. The CRIs guidelines exclude a computer programme or algorithms from being patented. To claim patent protection, it is recommended to describe hardware along with AI algorithms, the method of device which uses AI, and not focussing on codes/algorithms.
Regarding inventorship: Section 6 of the Patents Act, 1970 (the “Act”) states that an application for a patent can be made only by the true and first ‘inventor’ of the invention or an assignee. Further, the Act, in Section 2(1)(p), provides that a patentee is a ‘person’ entered in the register of the patent office as the grantee or proprietor of the patent. Accordingly, the Act suggests that the inventor must mean a natural person. Having said that, the Act, provides that the person includes the Government (non-person entity), and in Section 2(1)(y), provides that ‘true and first inventor’ has an exclusionary definition and only excludes the first importer of an invention into India, or a person to whom an invention is first communicated from outside India. Therefore, there exists ambiguity whether an AI machine could be regarded as an inventor in a patent application filed in India.
India has not yet seen a case regarding AI inventorship, and although there is a high chance that India will not radically deviate from the international position on the issue, if such a case were to arise, the ambiguity in the law (i.e., which recognises a non-natural person as an ‘inventor’) leaves scope for wider interpretation of the term ‘inventor’.
With the advancement in technology, inventions are moving towards AI-related works and there is a need for re-consideration of the guidelines and rules of the patent system. For instance, the current US laws fail to provide a solution to determine inventorship if it relates to a non-natural person. The USPTO had also reversed the Thaler’s request to be recognised as an inventor, substituting DABUS. In this regard, the USPTO described that being an AI machine, DABUS does not have any legal rights, and accordingly it cannot assign its rights to a person. Many complex questions regarding AI-related works remain unanswered. As things stand right now, it would seem that unless the laws are amended, AI would merely remain a tool for inventions, rather than transform into an inventor. Certainly, no jurisdiction as yet appears to have definitively addressed – either in statute or by way of guidelines – the issue of AI inventorship. But as with everything else, laws too are likely to evolve with changing times, and we can only wait and see where and how it will change.