22 December 2020

DABUS Down Under – Can an AI ‘Communicate’ an Invention to a Human Applicant?

Xmas robotBack in September I reported that an application naming an ‘artificial intelligence’ going by the name DABUS (‘Device for the Autonomous Bootstrapping of Unified Sentience’) as inventor had been filed in Australia.  The application – no. 2019363177 – was derived from an international application filed under the Patent Cooperation Treaty (PCT), and names Dr Stephen Thaler, the developer of DABUS, as applicant.  The Australian Patent Office issued a formalities report, 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).’  There has since been further correspondence between Dr Thaler’s Australian patent attorneys and the Patent Office.  Thus far, however, the initial objections have not been overcome, and it seems likely that the matter is headed for a hearing, which will result in a formal decision being issued.

On 19 November 2020, the applicant responded to the initial formalities report.  For some reason, this response is not currently available in the public ‘eDossier’ for the application, however the Patent Office’s reply of 25 November 2020 sets out the substance of the response:

You have indicated that there is no explicit definition of an inventor, which by implication means that an artificial intelligence machine can be an inventor. You have also stated that it is sufficient for the purposes of the Patents Act 1990 if the applicant derives title to the invention from the inventor under section 15(1)(c). In the present case this would require DABUS to transfer title to Stephen Thaler. It is not apparent that DABUS is capable of executing an assignment, or has a contract of employment (for instance).

Interestingly, however, the Patent Office reply goes further, by suggesting an alternative theory (not, it seems, put forward in the applicant’s response) under which the Dr Thaler might assert the right to be granted a patent:

It may be that you are suggesting that Dr Thaler should be regarded as the communicatee of DABUS (a category of applicants recognised under section 34(1)(e) of the 1952 Act, and amalgamated into the present section 15(1)(c) - JMVB Enterprises Pty Ltd v Camoflag Pty Ltd [2006] FCAFC 141). According to traditional principles the communication should be for the purpose of obtaining a patent (H's Application (1955) 73 RPC 197).

The significance of identifying a mechanism for Dr Thaler to derive rights to DABUS’ inventions is that, in the Office’s view, if DABUS ‘is not capable of transferring or communicating an invention to a person, it would appear to be inconsistent with the structure of the Act for the machine to be treated as an inventor for the purposes of the Act.’  However, quite why the Office should wish to make its own suggestions in this regard is something of a mystery.

The applicant, for his part, appears to want no part of this novel theory proposed by the Patent Office.  In a further reply dated 9 December 2020, his attorneys have argued simply that:

The common law confers ownership of anything produced by DABUS to its owner, the applicant. There is a general rule that the owner of a thing is the owner of the fruits of that thing, much like the owner of a fruit tree is entitled to the fruit produced by that tree. The principle of accession or first possession can apply.

I think that this is the right approach (even though it is unlikely to succeed).  A UK court has already ruled that DABUS is incapable of transferring intellectual property rights to Dr Thaler (or anybody else), and there is no reason to expect a different outcome in Australia.  Furthermore, an analysis of the historical basis for the category of ‘communicatee’ suggests that it may no longer exist under Australia’s current patent laws and that, in any event, it would not provide for Dr Thaler to obtain a patent on DABUS’ inventions.  His best bet is therefore to continue to push the ‘ownership’ line, even though it has so far failed in the UK, the US, and at the European Patent Office.  I believe that it will fail in Australia, also, under the existing law.  But my understanding is that the larger objective of the Artificial Inventor Project, which is backing Dr Thaler’s applications, is to lobby for changes in the law, to recognise AI inventors, and entitlement by way of ownership.

In any event, the Patent Office’s unusual proposition provides an opportunity to delve into this strange historical category of ‘communicatee’.  What is it?  Why did it exist?  Does it still exist somewhere in the modern patent law?  (Readers interested only in Dr Thaler’s prospects of success, and not the historical context, can skip ahead to the section entitled ‘Can Title to an Invention be Derived from an AI?’)

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