While many of us (in Australia at least), have spent the better part of the last two years locked down, sitting on the couch waiting out the COVID-19 pandemic, judges and patent examiners around the world have been busy grappling with questions ranging from the mundane (legislative interpretation) to the existential (what it means to be ‘a creator’1).
Earlier this year, we considered whether artificial intelligence (AI) machines can (and, more importantly, should) own intellectual property in our ‘Stranger than Sci-Fi’ series.
As 2021 draws to a close, we look back at the year that was for DABUS, the breakout AI star of the patent world, who was named as the inventor of a number of patent applications filed around the world which are now working their way through the various patent offices and Courts with varying degrees of success.
What (or who) is DABUS again?
DABUS stands for ‘Device for the Autonomous Bootstrapping of Unified Sentience’, and is an AI system created by Dr Stephen Thaler trained to mimic aspects of human brain function. Dr Thaler filed a number of patent applications claiming, broadly speaking, a food container, and a flashing light for attracting enhanced attention which, it is asserted, were invented solely by DABUS as the output of its own creative functionality.2 Indeed, Dr Thaler would be the first to admit that he himself has no expertise in the design of either food containers or flashlights that would qualify him for inventor’s rights in respect of the subject matter of the patents in question.
Crucially, these applications named Dr Thaler as the patentee, but listed DABUS as the inventor, and the validity of a patent application which lists a non-human inventor has vexed patent offices, judges and legal commentators ever since.
DABUS’ scorecard around the world
The below ‘scorecard’ gives an overview of DABUS’ successes and failures around the world, as they stand at the end of 2021.
|Australia3||Rejected by the Deputy Commissioner of Patents,4 successful appeal to the Federal Court of Australia5 (see our blog article on that decision), under appeal before the Full Federal Court of Australia, which is likely to be heard sometime in 2022.|
|UK6||Rejected by the UK Intellectual Property Office, unsuccessful appeals to the UK High Court7 and the England and Wales Court of Appeal.8|
|USA9||Rejected by the US Patents and Trademarks Office (USPTO), two petitions (requesting a review and a reconsideration of that review) dismissed by the USPTO,10 unsuccessful appeal to the United States District Court for the Eastern District of Virginia.11
|EU12||Rejected by the European Patent Office (EPO),13 under appeal before the EPO Board of Appeal, which has issued a preliminary view,14 ahead of a full appeal hearing set down for late December 2021.
Accepted by the South African Companies and Intellectual Property Commission, and published for grant,16 although the Commission’s examination procedure consists merely of a basic formalities check, rather than a substantive examination.
On balance, 2021 has not been a good year for poor DABUS’ patent portfolio, which seems increasingly likely to be slowly whittled down, jurisdiction by jurisdiction.
In those jurisdictions where DABUS’ applications have not been successful, amendments to the legislative framework governing the requirements for patent inventors are likely to be required to allow AI machines to be named as inventors going forward. In the meantime, inventions made by or with the use of AI should name the human(s) responsible as the inventor(s) to avoid rejection.
However, something tells us that DABUS won’t be too disappointed with these outcomes, not least because the various challenges have shone a spotlight on the future of AI-generated inventions. If nothing else, Dr Thaler’s legal battles are forcing patent offices, Courts and policymakers to begin to grapple with the more fundamental questions underpinning the existing legislative frameworks for patent protection, and whether they are adequate to deal with a world in which AI is sure to play an ever-increasing role.
1 In the words of his Honour Justice Beach of the Federal Court of Australia: “We are both created and create. Why cannot our own creations also create?” (Thaler v Commissioner of Patents  FCA 879 (FCA Decision) at .
2 Ibid at , .
3 Australian Patent No. 2019363177 ‘Food container and devices and methods for attracting enhanced attention’.
4 Stephen L. Thaler  APO 5.
5 FCA Decision.
6 UK Patent Nos. GB18116909.4 ‘Food container’ and GB1818161.0 ‘Devices and Methods for Attracting Enhanced Attention’.
7 Thaler v The Comptroller-General of Patents, Designs And Trade Marks  EWHC 2412 (Pat).
8 Thaler v Comptroller General of Patents Trade Marks And Designs  EWCA Civ 1374.
9 US Patent Nos. 16/524,350 ‘Neural Flame’ and 16/524,532 ‘Fractal container’.
10 In re Application of Application No.: 16/524,350 (no separate decision was issued in respect of the second patent application).
11 Stephen Thaler v. Andrew Hirshfeld, Performing the Functions & Duties of the Under Sec’y of Com. for Intell. Prop. & Dir. of the United States Pat. & Trademark Off., et al., No. 1:20-cv-903 (LMB/TCB), 2021 WL 3934803 (E.D. Va. Sept. 2, 2021).
12 European Patent Nos. EP18275163 ‘Food container’ and EP18275174 ‘Devices and methods for attracting enhanced attention’.
13 Grounds for the EPO decision of 27 January 2020 on EP18275163; Grounds for the EPO decision of 27 January 2020 on EP18275174.
14 Communication of the Board of Appeal of 21 June 2021 on EP18275163; Communication of the Board of Appeal of 21 June 2021 on EP18275174.
15 South Australian Patent No. ZA202103242 ‘Food container and devices and methods for attracting enhanced attention’.
16 Companies and Intellectual Property Commission Patent Journal Vol 54, No. 7 (July 2021).