The issue: Can AI be considered an inventor according to patent law?
Until a few months ago, the answer to this question would have been simply no.
Dr. Stephen Thaler, the developer of a type of artificial intelligence called DABUS (Device for Autonomous Bootstrapping of Unified Sentience), with the help of patent attorneys, under the Patent Cooperation Treaty started filing patent applications designating DABUS as the inventor with various patent offices in 2018.
Attempts to obtain a patent with AI as the inventor proved unsuccessful until July 2021. Indeed, in July 2021, within the space of a few days, the South African Patent Office (Companies and Intellectual Property Commission, “CIPC”) granted a patent in which DABUS was named as the inventor of a food container based on fractal geometry and the Australian Federal Court issued an order overturning the decision of the Australian Patent Office that rejected a patent application that designated DABUS as the inventor.
South Africa and Australia: Yes to AI as the inventor of a patentable invention
In South Africa, the CIPC granted the patent on July 28, 2021. Though DABUS was named as the inventor, the owner of the patent is Thaler. The patent was granted without comment by the CIPC. Before granting a patent, the CIPC checks only compliance with formal requirements and does not assess whether substantive requirements have been met.
A few days after the CIPC granted the patent, the Australian Federal Court ruled to overturn the decision of the Australian Patent Office that rejected Thaler’s patent application on the basis that only a human or legal person could be an inventor. While no grounds were given for the CIPC decision, the Australian Federal Court’s reasoning in overturning the Australian Patent Office’s decision offers food for thought.
The deputy commissioner of patents on behalf of the Australian Patent Office had rejected the patent application on February 9, 2021, stating that the spirit of the Patents Act of 1990, especially Section 15, was not compatible with the designation of a machine as the inventor. According to Section 15 “subject to this Act, a patent for an invention may only be granted to a person who: (a) is the inventor; or (b) would, on the grant of a patent for the invention, be entitled to have the patent assigned to the person; or (c) derives title to the invention from the inventor or a person mentioned in paragraph (b); or (d) is the legal representative of a deceased person mentioned in paragraph (a), (b) or (c).” The deputy commissioner, taking into account the absence of an explicit definition of “inventor” in the Act, analyzed whether Section 15 could be applied in a situation where a legal person derives the right to file a patent application by an AI inventor. The deputy commissioner concluded that Section 15(1)(b) is not applicable because an AI inventor cannot assign ownership of the patent to its owner, given that “a machine is property, and property cannot own property or enter into contracts.” Section 15(1)(c), the reasoning continued, also cannot be applied because AI cannot transfer an invention to its owner for the purpose of obtaining a patent and cannot have a beneficial interest in a patent. Finally, section 15(d) expressly refers to the legal representative of a deceased person and therefore cannot apply in an AI situation.
The Australian Federal Court took a different—and peculiar—stance and explained that the issue of patentability of an invention by AI must be analyzed on two levels: on the one hand there is the issue of ownership, and on the other hand there is the issue of inventorship. According to the Australian court, while only a human or legal person can be the owner, controller, or patentee of an invention, an AI can rightly be considered the inventor.
The court emphasized that in the Act there is no specific provision that refutes the possibility of an AI inventor and that the reliance on dictionary definitions is problematic. The court asserted that even if the dictionary definition of an “inventor” refers to a natural person, the word “inventor” is an agent noun, with the agent in this case being a person or a thing that invents. Just as the word “computer,” the court opined, is applicable to persons who or things that compute, “inventor” could apply to persons who or things that invent.
Moreover, according to the court, the purpose of the Patents Act (Section 2(a)) is to promote “economic wellbeing through technological innovation and the transfer and dissemination of technology,” and excluding inventions made by AI would be inconsistent with this purpose (para 124–128).
Particularly peculiar is the passage in the decision where the court explains that to avoid legal uncertainties it is important to recognize reality and name AI as the inventor when the invention is truly computer-generated without human assistance. Related uncertainties would be especially likely to regard identification of the inventor: “And if a human is required, who? The programmer? The owner? The operator? The trainer? The person who provided input data? All of the above? None of the above?”(para 131). For example, if the AI inventor cannot be recognized, the first human to discover the invention made by AI could claim to be the inventor and in the view of the court “that would be an odd outcome to say the least.” Another problem might arise if no human inventor were found, therefore preventing the patentability of some inventions entirely.
Finally, the court refuted the deputy commissioner’s interpretation of Section 15(1) and stated that Thaler is covered under Section 15(1)(c) because “as a consequence of his possession of the invention, combined with his ownership and control of DABUS, he prima facie obtained title to the invention” (para 189).
Recent updates in other countries
Thaler appealed most of the decisions of the patent offices that rejected his applications. In all the appeal proceedings (except those in the Australian court) the decisions of the patent offices were upheld.
The Legal Board of Appeal (“the Board”) of the European Patent Office (“EPO”) has not reached a final decision yet, but in June 2021 it issued a preliminary opinion. The Board was very careful to explain what it saw as the scope of the decision: in the Board’s view, the appeal concerns whether the applicant has a right to designate AI as an inventor on the form to be submitted according to Article 81 of the European Patent Convention (“EPC”). If not, that would not mean that “under the EPC an application is to be rejected where the applicant refuses to indicate a natural person inventor because in his opinion the invention was made without any causal human contribution.”
The Board stated that under the EPC the inventor indicated on the form pursuant to Article 81 EPC must be a person having legal status, so that they can be subject to rights and duties. Moreover, the Board highlights that Thaler is not arguing that AI should have legal capacity, but is simply submitting that a machine should be considered an inventor.
There is also a recent update regarding appeal of the decision of the United States Patent and Trademark Office (“USPTO”) to reject Thaler’s patent application. On September 2, 2021, the District Court for the Eastern District of Virginia denied Thaler’s appeal seeking to overturn the USPTO decision. The court also stated more generally that the decision of the USPTO was correct given the result of a public consultation issued by the USPTO that reached the conclusion that “there may come a time when artificial intelligence reaches a level of sophistication such that it might satisfy accepted meanings of inventorship, but that time has not arrived yet.” The EPO also reached a conclusion along these lines, saying that “scientists seem to agree that AI which could invent independently of human direction, instruction and oversight is a matter of undefined future and thus science fiction.” This is certainly the first victory for Thaler and his team after many rejections by patent offices. It remains to be seen whether other countries will follow the South African and Australian approach.
Even the administrative authorities who rejected the possibility that an AI machine might be listed as inventor in an application for patent registration have not completely ruled out the possibility. They have instead acknowledged, at least between the lines, that this option cannot be left to their discretion, but rather must be the considered result of policy choices made after more in-depth reflection on the economic and legal implications. All in all, the issue is moving in the direction hoped for by those who have embarked on a campaign to obtain recognition of the creative capacity of AI machines.
In the Australian case, it was likely easier for the court to conclude that an AI machine could be listed as the inventor in a patent application because the patent holder and the owner of the AI machine were one and the same. We do wonder whether the same conclusion would have been reached without that overlap. What would have happened if the invention had been created by the AI machine on behalf of a person other than the owner of the AI machine and that person had been indicated as the owner of the patent for the invention? Who or what would have been the patentee’s assignor? And based on what title?
Maybe the patent regime is outdated and must be changed, but by means of a systematic and coordinated approach of the legislators, avoiding the risk of a patchwork patent protection
 Please refer to our previous articles on the rejection of the patent application by EPO: https://portolano.it/en/newsletter/portolano-cavallo-inform-digital-ip/epo-rejects-two-patent-applications-that-designate-artificial-intelligence-as-the-creator-of-the-inventions#_ftn2; on the rejection by USPTO: https://portolano.it/newsletter/portolano-cavallo-inform-digital-ip/united-states-patent-and-trademark-office-rejects-patent-application-identifying-artificial-intelligence-system-as-the-inventor.
For further information, see http://www.cipc.co.za/index.php/trade-marks-patents-designs-copyright/patents/how-app/.
Thaler v. Commissioner of Patents  FCA 879.
 Thaler v. Commissioner of Patents  FCA 879.
 Communication of the Board of Appeal pursuant to article 15(1) of the Rules of Procedure of the Boards of Appeal, Ref RJ/N35111-EP, 21 June 2021 available at https://register.epo.org/application?documentId=E6C2MENW5735240&number=EP18275163&lng=en&npl=false.
Thaler v. Iancu, case no. 1:20-cv-00903 (E.D. VA).