The influx of AI in various businesses intricate has forced the companies to rethink the base of a business and change its attitude towards more prospective business strategy including innovation from AI. The bigger issue comes up when AI itself becomes the inventor or author. This write-up will aim to delve around the bigger issue of whether an AI could be ascribed as an inventor in the light of the Dabus case and how this case was a missed chance to develop a jurisprudence of this contentious issue.
The case of Stephen L Thaler v. Comptroller General of Patents, Design and Trade Mark[1] is the latest celebrated case of United Kingdom (‘UK’). It starts from two patent applications, GB1816909.4 and GB1818161.0, respectively filed by Thaler in his name, in the United Kingdom Intellectual Property Office (‘IPO’) for the grant of patents. The application specifies that Thaler was not an inventor, which is possible as Section 30[2] of the Patents Act, 1977 (‘the Act’) states that the right to apply for a patent is transferable. IPO subsequently notified Thaler to file the statement of inventor-ship and the right to grant patents pursuant to Section 13 of the Act which was Patent Form 7[3]. Thaler filed Patent Form 7 where he stated that the inventor is none other than an AI named Device for the Autonomous Bootstrapping of Unified Sentience (‘DABUS’) and since he is the owner of the AI is entitled to obtain the right to grant of the patents. To put it simply, Dabus is the inventor, and Dabus is owned by Thaler. Due to this ownership of Dabus by Thaler, Dabus has transferred the right to grant patents to Thaler. So inherently, the contention assumes that Dabus is entitled to have patents and hence, it can transfer it to its owner, Thaler. This inherent assumption put in the case has caused the conundrum that whether an AI can be granted a patent, leave alone transferring it. The decision of IPO was negative, which was appealed to the High Court of England and Wales, Special Patents Court which upheld the IPO’s decision.
A similar matter was also been raised in the European Patent Office as well as the United States Patent and Trademark Office but it received the same fate. For our discussion, the author will be restricted to the decision of the Special Patents Court of the High Court of England and Wales and will analyse the situation in the light of the reasoning given by the High Court.
The author tried to delve into various legislations and ended up getting only one provision that does not directly specify but tries to fill some gap with regards to computer-generated work specifically dealing with copyright. Section 9 Para 3[4] of the UK Copyright, Design and Patents Act, 1988 specifies that any artistic, literally, dramatic or musical work that being computer-generated; the author will be the one who undertakes all the necessary arrangements. But it doesn’t answer our tryst for patents and inventions. The United States (‘US’) doesn’t leave any scope. Section 306[5] of the Compendium of the US Copyright Office states clearly that registration of authorship will only be done, provided that the work was created by a human being, giving no scope to AI made expressions leave alone for copyrights. The US Patents Law narrows down the term inventor to ‘individual’ or in case of the joint invention, ‘individuals’. Hence, by using the term ‘individual’, the US does not leave any scope for corporations too.
Before getting on to analyse this case let us make ourselves very clear with two sections of the UK Patents Act, 1977 around which the whole case revolves. Section 7[6] of the Act provides the right to apply for and grant patents whereby any person may make an application for patents and the inventor can be granted the patents. Section 7(2) states that any person associated with the application through any conventions or any rule of law or any successor is entitled to be granted the patents. Section 7(3) states that the ‘inventor’ concerning the invention is the actual devisor of the invention. Whereas, Section 13[7] talks about the right of an inventor to be mentioned in the invention. The court analysed each of the sections before arriving at a judgment.
A. Was the Court’s decision appropriate?
The IPO as well the Special Patents Court relied on similar reasoning to reach an agreement. Dabus is not a legal person and being a machine it cannot hold patents for the Act. To critically analyse the court’s decision, we split this into two parts. First, did the court explain the nature of ‘inventor’? Yes, the court did try to answer who the inventor is. But the answer seems to be very simplistic. The Court continuously relied upon the fact that Dabus cannot be granted the patent because it is not the ‘person’ without getting into the literal interpretation of what ‘person’ can constitute. Defining the limit of ‘person’ is something that seems to be left unaddressed. A person is natural as well as a legal person. Corporations forms as a part of a legal person. Through the judgment the Court made itself very clear that the inventor cannot be any other than a person, therefore avoiding getting outside the bandwidth of the statutory scheme of the Act. One reason why it can be said to be a missed chance is because of their prior assumption of a person being a human and therefore, avoiding stretching the constitution of the term inventor.
Secondly, did the court try explaining the subject-matter? The author feels that the court failed to address such a contentious issue holistically. What the court did is to revolve around the term ‘inventor’ linking it to ‘person’ keeping prior presumption of a person being a human. Trying to solve this conundrum has left the larger picture being unaddressed about the fate of future cases with this subject-matter. The court very clearly stated that it can only construe legislation and cannot legislate agreeing to the point that this is a policy issue that requires deliberations. It is a matter of how should be and not how the law is. But the court has the power to interpret the law. Only humans can be persons are something which can be treated as a narrow definition being taken by the court. If a legal person can be construed as a corporation, how minimal a chance can be that an AI could also be a person? The second reason why it can be said to be a missed chance is because of this narrowed interpretation and a missed chance to dictate the jurisprudence that could govern the AI-related inventions in the world.
B. Was the reasoning of the court in consonance with that of the existing legislation?
Sections 7 and 13 of the Act play a major role in this case. Thaler contended that his arguments are based upon Section 13 of the Act and not on Section 7, whereas, the court decided to read Section 13 with Section 7. Section 7 talks about the right to apply for a patent where under Clause 1 the term used is the person. On the other hand, the term used in Clause 2 is ‘inventor’. Clause 3 specifies that the inventor is the actual devisor of patents. Now, Section 13 talks about mentioning the inventor. Primarily, there has been no explicit ‘prohibition’ for granting a patent to AI. Sticking to Section 13 will make the job easier as it speaks of mentioning the inventor which Thaler did by mentioning Dabus. But, the court reiterated the reasoning observed in Yeda research and development Company Ltd. v. Rhone-Poulenc Rorer International Holding[8] that Section 7 contains an exhaustive code to determine who is entitled to grant the patents. The author feels that the reasoning being relied upon is wrongly represented. If an inventor used Section 13 as a part of the arguments advanced, there seems no reason to exclude the invention of an AI. Section 13 simply talks about the mentioning of the inventor which Thaler did by mentioning Dabus. The author is of the view that reading Section 13 with Section 7 is being purely misconceived and was unnecessary in the present case. Thaler’s contention being only subject to Section 13 was enough to prove that an AI can be mentioned as an inventor. Section 7(3) specifies that the inventor is one who is the actual devisor of the invention. Let’s suppose, if we read Section 13 with Section 7(3), even then also Dabus is being qualified for being the inventor. The main problem lies with the word ‘person’ being used in Section 7(1), hence either increase the threshold of who the ‘persons’ can be, or it’s better to not read Section 7 as Section 13 is sufficient to prove.
The author feels that, if for the subject-matter, Section 13 sufficiently answers, then it is highly imperative not to link with other sections for the sake of bringing more clarity.
C. Was the Court successful in providing for any policy implications?
The rejection of granting of the patent to Dabus can have large policy implications for the whole world. Not granting the patents sparks a new debate as to who will be the owner of the AI inventions. Well as the author already pointed out, this case was a missed chance to formulate a policy that could at least bring some clarity for the inventions. The author respects the court’s decision and the limitation being propounded by having a separation of power. But the author feels that the court could, at least, have framed some guidelines which can specify the future of such cases. To dismiss the case giving a simple reason, that it being a larger policy issue, cannot be a sufficient answer. One cannot deny the fact that these cases will not come up. The author will reiterate two reasons that will substantiate the lack of policy implication and therefore, it is a missed chance. Firstly, one is not able to effectively interpret what can ‘person’ constitutes. And secondly, not able to effectively deal with the primary subject-matter that who will be the owner of AI-related inventions? Instead, the court relied upon that AI cannot be granted patent since they are not a person and left the question of who should be the owner of AI inventions to a larger policy issue.
Dabus’ case will prove to be the future of AI inventions. In this era of technological interventions, it is very hard to assume the extent of human interventions. Those businesses which are based upon AI for their conduct must be asked to subtract the AI inputs so that the proportions of human inputs could be ascertained, and then it will be realised the depth of AI intervention in today’s technological era. Mostly it has been contended that AI is the tool used by humans in inventing. With the Dabus case, the tool is inventing, Even if the case has been dismissed, it will be a start of the battle for an effective mechanism for AI-related Inventions.
*Author is an Advocate practicing in Allahabad High Court and can be reached at saranshchaturvedi09@gmail.com
[1] [2020] EWHC 2412 (Pat)
[2] Section 30. Nature of, and transactions in, patents and applications for patents
[4] Section 9 Para 3, UK Copyright, Design and Patents Act, 1988
[5] Section 306, Compendium of the US Copyright Office
Click to access ch300-copyrightable-authorship.pdf
[6] Section 7. Right to apply for and obtain a patent
[7] Section 13. Mention of Inventor
[8] [2007] UKHL 43 at para 18
