This browser is not actively supported anymore. For the best passle experience, we strongly recommend you upgrade your browser.
| 2 minutes read

DABUS Denied: UK Joins EU, US and Australia In Requiring Human Inventorship For Grant of Patent

In alignment with both the U.S. Patent & Trademark Office's determination in 2020 (affirmed by the U.S. Court of Appeals for the Federal Circuit) – as well as the similar result Dr. Thaler encountered with his applications with the U.S. Copyright Office – the UK's Intellectual Property Office denied Stephen Thaler's application to register two patents for inventions purportedly devised by DABUS, his so-called “creativity machine”.  And just a few months after the U.S. Supreme Court denied Dr. Thaler's petition for a writ of certiorari, the UK Supreme Court issued a decision denying Dr. Thaler's appeal.

...DABUS is not and was not an inventor of any new product or process described in the patent applications. It is not a person, let alone a natural person and it did not devise any relevant invention.

Filed in October of 2018, Thaler's UK patent applications (one for a “new kind of food or beverage container” and a second for “a new kind of light beacon and a new way of attracting attention in an emergency”) tested the issue of human inventorship by stating expressly that Dr Thaler was not the inventor.  In 2019, Dr. Thaler responded to the UK IPO's request for a statement of inventorship by stating that he had a right to claim the patents as the owner of DABUS, the AI machine he claimed had created the inventions described in the applications.  In 2020, Dr. Thaler's efforts to obtain patent protection through the European Patent Office also failed; and, after a brief 2021 victory in Australia wherein Dr. Thaler successfully appealed the Deputy Commissioner of Patents' refusal to grant a patent to DABUS, the Federal Court of Australia concluded that “the origin of entitlement to the grant of a patent lies in human endeavour, which is rewarded by the grant of a limited term monopoly”.

The UK Supreme Court's decision denying a grant to patent protection to DABUS, while aligned with the U.S., EU and Australia decisions in its focus on the procedural requirement of human inventorship, is expressly narrow in scope, acknowledging that there are important policy questions yet to be addressed:

[T]his appeal is not concerned with the broader question whether technical advances generated by machines acting autonomously and powered by AI should be patentable. Nor is it concerned with the question whether the meaning of the term “inventor” ought to be expanded... to include machines powered by AI which generate new and non-obvious products and processes which may be thought to offer benefits over products and processes which are already known. ... It may be thought that the rapid advances in AI technology in recent times render these questions even more important than they were when these applications were made.

These types of policy questions (and more) were the subject of an amicus brief filed by Dr. Lawrence Lessig and others in connection with Dr. Thaler's petition for writ of certiorari to the U.S. Supreme Court, wherein the amici pointedly argued that "the ‘human being’ requirement conflicts with [the U.S. Supreme] Court’s jurisprudence interpreting the Patent Act in a manner that promotes innovation and technological advancement.”  The unavailing result, according to the amici, is a lack of patent protection for these inventions.

If the individuals cannot accurately claim to be the inventor and if the AI system is excluded from “inventor” status, the current legal framework entirely fails to protect AI-generated inventions, resulting in patent invalidation.

For the time being, at least, this quandary persists in the U.S., EU, Australia and now the UK.


artificialintelligence, ai, patentlaw, technologylaw, intellectualproperty, ip, intellectual property, patents