In Thaler v The Comptroller-General of Patents, Designs And Trade Marks [2020] EWHC 2412 (Pat), the England and Wales High Court has dismissed an appeal by Dr Stephen Thaler from a decision of the UK Intellectual Property Office (IPO), which determined that one or more natural persons must be named as inventor(s) on a patent application and, therefore, that two UK applications naming an ‘artificial intelligence’ called DABUS as inventor were deemed to be withdrawn for failing to satisfy this requirement. Thaler had refused to identify a human inventor on the basis that no natural person had made an inventive contribution to the inventions disclosed in the applications. Furthermore, he had identified himself as the applicant, claiming ownership of the inventions on the basis of ownership and control of DABUS. The court also rejected this theory, finding no legal basis for a machine either to own the intellectual property, or for rights in machine-generated inventions to be transferred to a human owner.
Attempts to name DABUS as inventor on corresponding applications have also been rejected by the European Patent Office (EPO), and the US Patent & Trademark Office (USPTO) [PDF 5.27MB].
Readers who have been following developments in this case will be aware that while Thaler is named as the applicant and developer of DABUS, the real driving force behind efforts to recognise machine inventors is Professor of Law and Health Sciences at the University of Surrey, Ryan Abbott, through his Artificial Inventor Project. In addition to the patent applications filed at the UK IPO, the EPO, and the USPTO, there is also a single international patent application filed under the Patent Cooperation Treaty (PCT) encompassing both inventions, published as WO2020079499. Abbott not only heads up the Artificial Inventor Project, he is also named as agent for the PCT application, he represented Thaler in the English High Court appeal, and it has been reported that he is also representing Thaler in a parallel Federal District Court appeal in the US.
The PCT application recently entered the national phase in Australia, as application no. 2019363177. A formalities report has been issued, objecting that the application does not comply with the Patents Regulations 1991, because ‘it is the Commissioner’s understanding that inventors for the purposes of the Patents Act 1990 must be natural persons. As DABUS is not a natural person the Commissioner is of the view that no inventor has been supplied for the purposes of Regulation 3.2C(2)(aa).’ Thaler has until 21 November 2020 to either: provide the name or names of natural persons who are the actual inventors; or provide submissions to the Commissioner explaining why DABUS, despite being an artificial intelligence, can be legitimately recorded as an inventor. I anticipate that Thaler will take the latter option, and that his submissions will be rejected on similar grounds to the UK case, given that the scheme for establishing inventorship and entitlement to the grant of a patent under the Australian Patents Act 1990 is similar to the corresponding UK provisions.
In my opinion, Abbott’s Artificial Inventor Project is misconceived. His arguments as to why we should recognise non-human inventors are unsupported by any evidence, and amount to little more than a personal opinion. His methods of pushing the issue through patent offices and into the courts may be successful in generating attention, but they are doomed to fail, and wasteful of administrative and judicial resources. Furthermore, the very idea that machines might be granted the ‘right’ to be recognised as inventors lacks credibility, and is unlikely to secure widespread public support.
In this article, I shall explain my position in more detail, while also taking the opportunity to discuss the English High Court decision, which is likely to be influential in the Australian case.
