On 27 August 2021, the Commissioner of Patents lodged an appeal (case no. VID496/2021) against the decision of Justice Beach in the Federal Court of Australia finding that the ‘AI’ machine known as DABUS could be named as sole inventor on an Australian patent application. Unusually, and presumably in recognition of the media and public interest generated by this case, IP Australia took the step of announcing the filing of the appeal, while emphasising that ‘[t]he appeal is centred on questions of law and the interpretation of the patents legislation as it currently stands’ and that ‘[t]he decision to appeal does not represent a policy position by the Australian Government on whether AI should or could ever be considered an inventor on a patent application.’ The appeal will most likely be heard by a Full Bench of the Federal Court comprising three judges, although in rare cases deemed sufficiently significant a five judge panel may be assigned. A hearing could take place as early as November this year, but at this stage it seems more likely to be scheduled for early in 2022.
In the meantime, however, parallel test cases initiated by Surrey University Professor Ryan Abbott’s Artificial Inventor Project have been making their way through the US and UK courts. On 2 September 2021, Judge Leonie M Brinkema in the United States District Court for the Eastern District of Virginia (‘EDVA’) rejected Dr Stephen Thaler’s appeal against the USPTO’s decision to refuse two patent applications on the basis that DABUS is not a human being and therefore cannot be an inventor under US law (Stephen Thaler v Andrew Hirshfeld and the US Patent and Trademark Office, Mem. Op. [PDF 998kB]). And on 21 September 2021, a majority of the Court of Appeal of England and Wales (Lord Justice Arnold and Lady Justice Elisabeth Laing, Lord Justice Birss dissenting) upheld a decision of the High Court which agreed with the UK Intellectual Property Office (UKIPO) that Thaler’s applications should be deemed withdrawn because of his failure to identify a natural person as inventor (Thaler v Comptroller General of Patents Trade Marks And Designs [2021] EWCA Civ 1374).
These cases are, of course, of interest because they concern the fascinating question of whether non-human machines can be inventors for the purposes of obtaining patent. But they are also interesting for what they reveal about the differences between the treatment of inventors under US and UK law. In the US the inventor is central and indispensable – a position that arguably derives ultimately from the Constitutional authority for Congress to make laws ‘promote the Progress of Science and useful Arts, by securing for limited Times to Authors and Inventors the exclusive Right to their respective Writings and Discoveries’. In the UK, however – and in the view of Birss LJ in particular – the identity of the inventor is almost irrelevant in the majority of patents applied for, prosecuted and granted.
I will cover these latest developments in the DABUS saga over a series of three articles. In this first article, I will look at the approach taken to the role of the inventor in the US, how it differs from other jurisdictions, and the recent decision from the EDVA. The second article will cover the split decision in the UK, and how the differing opinions of eminent patent jurists Arnold LJ and Birss LJ stack up. Finally, in the third part I will look at where Australia sits, and consider whether either of the US and UK decisions may be of any relevance in the upcoming Full Court appeal.
The Role of the Inventor – How the US is Different
There are, broadly speaking, two schools of thought on the role of inventors in the patent system. The first – exemplified in its purest form in the United States of America – holds that since all rights ultimately derive from the inventor (or joint inventors, but for convenience I will stick with the singular), the patenting process cannot proceed without the inventor’s involvement. The second, which is nowadays more common around the world, acknowledges that in the case of many, and perhaps most, commercially valuable inventions, the right to any patent is not held by the inventor by the time an application is filed, and that requiring the inventor to participate in the process typically generates additional red tape while serving no useful purpose.
Put another way, in the US the inventor is the primary actor, from which all else follows. Elsewhere, however, the primary concern is the identification of the party that is legally entitled to ownership of a patent and, while the identity of the inventor is not unimportant, it is most often secondary. To give but one example of how this might simplify the system, if a company employs a team of 10 R&D engineers from which a patentable invention arises, it makes no practical difference which members of the team were actually involved in devising the invention. Whether it was just one engineer, or all 10, their employment contracts ensure that the rights to the invention are owned by the employer.
In the US, each inventor associated with a patent application must execute an oath or declaration stating that they are ‘the original inventor or an original joint inventor of a claimed invention in the application’. Notably, this is not merely a statement that the signatory invented ‘something’ – it must be something actually claimed. That implies, among other things, that the inventor must have read and understood the claims in the application.
Until recently, only an inventor could file a US patent application. If somebody else, such as an employer, was entitled to the corresponding rights, they were then formally assigned by the inventor at the time of, or after, filing. In what many regarded as a major concession, since 16 September 2012 (pursuant to the the America Invents Act ) it has been possible for ‘a person to whom the inventor has assigned or is under an obligation to assign an invention to file and prosecute an application for patent as the applicant’. But the inventor must still be identified, and must still execute an oath or declaration. Furthermore, the AIA balanced this change by reconfirming the nature of an inventor, adding a definition in 35 USC § 100(f) that ‘…“inventor” means the individual or, if a joint invention, the individuals collectively who invented or discovered the subject matter of the invention.’ This implies that the inventor must be a natural person (‘individual’), consistent with US case law that invention requires the mental act of conception, which is ‘the formation in the mind of the inventor, of a definite and permanent idea of the complete and operative invention, as it is hereafter to be applied in practice’ Hybritech, Inc. v. Monoclonal Antibodies, Inc. 802 F.2d 1367, 1376 (Fed. Cir. 1986).
Not so much in the UK, however. Indeed – as we shall see in the second article in this series – according to the dissenting judgment of Lord Justice Birss, a patent application may proceed, and a patent can be granted, in the UK even if no inventor can be identified – in fact, even if there is no (human) inventor to identify.
All of which underlies the very different approaches taken in the US and the UK to evaluating the legitimacy of patent applications naming the ‘AI’ machine DABUS as sole inventor. It also explains why DABUS really stands no chance in the US, whereas it has so far gained the support of one eminent patent jurist on the three-judge panel of the England and Wales Court of Appeal – not enough to win the day, but perhaps sufficient to earn it a further hearing before the Supreme Court.
The US Decision in Brief
There is nothing remotely unexpected in Judge Brinkema’s rejection of Thaler’s appeal. As she has pointed out, both the context of the Patent Act, and Supreme Court precedent, require that the word ‘individual’ be construed to mean a natural person (Mem. Op. pp 9-13). It is clear that identifying the inventor is no mere formality. ‘Each individual’ who is an inventor is required to execute an oath or declaration containing a statement that ‘such individual believes himself or herself to the the original inventor or joint inventor of [the] claimed invention’ (Mem. Op. p 11). Quite aside from the express language, executing legal documents and expressing a belief are not acts that can be performed by a machine.
Since at least the publication of his article ‘I Think, Therefore I Invent: Creative Computers and the Future of Patent Law’, Boston College Law Review, Vol. 57, No. 4, 2016 (also available at SSRN), Professor Abbott has been arguing that ‘computers can be inventors because although AI would not be motivated to invent by the prospect of a patent, computer inventorship would incentivize the development of creative machines. In turn, this would lead to new scientific advances’ (‘I Think, Therefore I Invent’, p 1081). Dr Thaler now finds these, and related, arguments attributed to him in court proceedings. However, Judge Brinkema was unswayed, observing (Mem. Op. p 14) that ‘having neither facts nor law to support his argument, plaintiff’s main argument is that policy considerations and the general purpose of the Constitution’s Patent Clause and the Patent Act require that the statute b read to encompass artificial intelligence machines as “inventors”.’
Conclusion – DABUS Doomed?
Judge Brinkema is, in my view, plainly correct. Thaler has neither facts nor law on his side. And, as the judge goes on to point out, there is clear Supreme Court and Federal Circuit precedent holding that policy considerations (particularly, one might think, vague considerations unsubstantiated by any evidence) ‘cannot overcome a statute’s plain language’.
On this basis, DABUS has no prospect of being recognised as an inventor under current US law. The statute is clear – and not merely due to some ‘outdated’ language or case law, but also because of a definition added in 2012 by the America Invents Act.
Professor Abbott has confirmed in a posting on LinkedIn that ‘[t]he EDVA decision will be appealed to the Court of Appeals for the Federal Circuit.’ I venture that Thaler will be unsuccessful there as well.
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