PATENTS
DABUS: AI missed opportunity?
Lord Justice Birss’ dissenting judgment offered a workaround to a deficiency in the UK patents system, argues David Brinck of EIP.
The judgment by the English Court of Appeal regarding the DABUS case, addressing the patenting of inventions “invented” by artificial intelligence (AI), is distinguished by a dissenting judgment by Lord Justice Birss that on one hand criticises the arguments presented by appellant for the patenting of such inventions, and on the other hand, sets out arguments why the patenting of such inventions is compatible with current legislation in the UK.
To recap, the appeal relates to the deemed withdrawal of two UK patent applications naming an AI machine, Device for the Autonomous Bootstrapping of Unified Sentience (DABUS), as the inventor for failing to comply with the requirements in section 13 of the UK Patents Act 1977 to identify a person as an inventor and to establish how the applicant, Stephen Thaler—the owner of DABUS—derived the right to be granted the patent.
The two patent applications were directed to a food container and a form of flashing light. It was not in dispute that the requirements of novelty and inventive step were satisfied for the two patent applications.
Background
The DABUS patent applications arose from “The Artificial Intelligence Project”, the stated aim of which is to seek IP rights for inventions generated by an AI without a traditional human inventor (see www.artificialinventor.com). From the outset of his judgment, Birss appears distinctly unimpressed by the manner in which the appeal proceedings were conducted, stating: “At first sight, and given the way this appeal is presented by both parties, the case appears to be about AI and whether AI-based machines can make patentable inventions.
“In fact, this case primarily relates to the correct way to process patent applications through the Patent Office (UKIPO) and turns on material which was either buried in the papers but ignored in the written and oral argument, or not referred to at all. It is an object lesson in the risks of advocacy being distracted by glamour.”
”If the patent system is not capable of handling inventions made by AI, then those inventions would not be published as part of the patenting process meaning that the patent system in the UK is not fully fit for purpose.”
David Brinck
Birss breaks down the appeal into three core questions, which can be paraphrased as:
- Does the UK Patents Act require an inventor to be a person?
- What is section 13 of the UK Patents Act for and how does it work?
- What is the correct response to the information provided by Thaler?
Before addressing these questions, Birss tracks the legislative history relating to inventors and entitlement from the Statute of Monopolies of 1623 to the Banks Committee of 1970. From this analysis, Birss drew the following conclusions regarding the relevant provisions of the present UK Patents Act:
“i) The concept of the inventor was to be limited to the person who actually devised the invention.
1. ii) Applications for patents could be made by anyone and the Comptroller, in granting a patent to the applicant, was not ratifying their claim to the right to be granted the patent.
iii) Applicants would no longer be required by law to name the inventor. They would simply be required to state who they believed the inventor to be. That is because the true identity of the inventor was no longer to be relevant to any question the Comptroller would have to decide when deciding to grant a patent to the applicant. In future the only relevance of the identification of the inventor was so that that inventor, if identified, could be mentioned in the published patent.
1. iv) Arguments about entitlement to the grant of patents were to be resolved by a separate procedure and only at the suit of a person disputing ownership of the patent.”
With these conclusions in mind, with regard to question 1 Birss states that in the context of the present UK Patents Act, the inventor must be a person. This is not to say that the DABUS did not create the inventions, but rather that there is a statutory requirement for the inventor to be a person.
While not addressed by Birss, the question must arise as to whether a person could have been named as inventor for the two patent applications. Thaler created DABUS and owned DABUS, but could Thaler be said to have actually devised a new food container and a new form of flashing light?
The answer to that question probably involves a detailed investigation into the operation of DABUS and the extent to which its output is determinative. However, if it is assumed that Thaler is not an expert in food containers and flashing lights and did not come up with the novel aspects of the inventions of the two patent applications, it seems hard to argue that Thaler was the “actual deviser” of the inventions of the two patent applications.
Section 13
Turning to question 2, Birss argues that section 13 of the UK Patents Act only requires the applicant to identify who is believed to be the inventor. In particular, Birss notes that the Banks Committee expressly contemplated cases in which the inventor may not be identifiable. With regard to how the applicant derived the right to be granted the patent, Birss argues that there is no need to give a detailed explanation of why the applicant was entitled to the invention and the Comptroller need not be satisfied with the explanation.
According to Birss, it is clear from the report of the Banks Committee that the intention of the present UK Patents Act was that the application process is simplified by removing the requirement for the Comptroller to examine entitlement, but rather to provide a mechanism under which disputes concerning the entitlement to be granted a patent can be settled by a separate procedure.
”It is noteworthy that Arnold also criticises the arguments put forward on behalf of the applicant, stating that it was 'surprising, and disappointing, that we received no submissions concerning the history of section 13(2)'.”
An important point regarding the mechanism under which disputes regarding entitlement to be granted a patent under UK law is that the dispute has to be initiated by a person who argues that they are entitled to the grant of the patent. The investigation then proceeds by determining who has the better claim.
Even without any express provision in law under which Thaler would be entitled to a patent, it is hard to conceive of any person who could establish that they had a better claim to the entitlement to be granted a patent. Birss argues that such a consequence was deliberately built in to the present Patents Act.
Birss’ answer to question 3 was therefore that, despite the UK patents act requiring an inventor to be a person, Thaler had satisfied the requirements of section 13 and therefore the appeal should be allowed and the Comptroller should proceed with examination of the two applications in the normal way. If any person considers that they have a better right than Thaler to the patents, then they could issue entitlement proceedings.
Dissenting judgment
Having outlined the reasoning behind Birss’ judgement, it should be reiterated that this is a dissenting judgment. Lady Justice Elizabeth Lang and Lord Justice Arnold both dismissed the appeal on the grounds that the applicant is required to file a statement that complies with section 13 of the present Patents Act, ie, names a person as an inventor and sets out a viable derivation of the right to be entitled to the patent.
It is noteworthy that Arnold also criticises the arguments put forward on behalf of the applicant, stating that it was “surprising, and disappointing, that we received no submissions concerning the history of section 13(2)”. However, Arnold differed from Birss by relying more on case law concerning section 13 in his analysis than evidence of the purpose of section 13 when enacted.
From the viewpoint of a patent attorney prosecuting patent applications at UKIPO, the majority view leaves open the question of how to comply with the formal requirements concerning inventorship and entitlement when filing patent applications for which it is difficult to identify a person as having actually devised the invention. This is a concern as this scenario can be expected to be encountered more and more frequently.
As mentioned in the judgment, UKIPO is currently carrying out a consultation regarding AI which covers, among other things, inventions made by AI. As noted in this consultation, the aims of the UK patent system include incentivising invention by encouraging investment in research and development and also by publishing advances so that they can be worked on and improved by others.
Given this, it seems that if the patent system is not capable of handling inventions made by AI, then those inventions would not be published as part of the patenting process meaning that the patent system in the UK is not fully fit for purpose.
The attractiveness of Birss’ dissenting judgment is that it would have provided a framework under which patent applications for inventions made by AIs could have been handled without requiring any legislative changes, although some difficult entitlement proceedings may have been anticipated.
On the contrary, the majority judgments highlight the presence of a deficiency in the patent system in the UK and it can only be hoped that this consultation will result in legislative changes that rectify this deficiency.
David Brinck is a partner and UK and European patent attorney at EIP. He can be contacted at: dbrinck@eip.com
Images: Shutterstock / Andrey Suslov
