The Quest for DABUS Continues: U.K Most Recent Country to Deny DABUS as an Inventor
By: Kristy McMullen
Inventor
In 2018, Dr. Stephen Thaler, a researcher specializing in artificial intelligence (AI), filed patent applications in several countries and designated a machine called Device for the Autonomous Bootstrapping of Unified Sentience (DABUS) as the inventor. Dr. Thaler earned his Ph.D. in Physics from the University of Missouri-Columbia with a thesis that focused on radiation damage in silicon. He is currently the President and CEO of Imagination Engines, Inc., a company known for computational creativity and for working with the U.S. Department of Defense. Dr. Thaler claimed that DABUS acted autonomously as an inventor without help from humans and that DABUS is a “creativity machine.” The first patent application Dr. Thaler filed with DABUS as the inventor was for a food (or drink) container whose shape allows for improved storage and handling characteristics compared to traditional container shapes. The second patent application Dr Thaler filed was for a flashing light beacon that emits a unique flash pattern, making it suitable for search and rescue operations. Dr. Thaler applied for patents under DABUS in several countries including U.S, U.K, South Africa, the EU, and Australia.
On December 20, 2023, the United Kingdom Supreme Court dismissed Dr. Thaler’s appeal of his patent application, affirming the decision of the Comptroller-General of Patents, Designs, and Trademarks. The Comptroller-General found that a machine that uses AI to create cannot be an inventor under the U.K Patents Act of 1997 (the “Act”). The Court’s dismissal relied on two main points.
First, the Court, using a textualist approach, held that an “inventor” must be a natural person under Sections 7 and 13 of the Act. The issue raised was whether or not the term “inventor” extends to machine actions, and the Court held that an “inventor” under the Act must be a natural person. Further, the Court relied on statutory provisions to find that the Act defines an inventor as “the actual deviser of the invention,” and that under section 13(b) of the Act, “the Act contemplates that the inventor is a natural person.”
Second, the Court held that under the Act non-inventors only have “derivative rights that have an original source, claimed through a qualifying human inventor under sections 7(2)(b) or (c).” Derivative rights are rights related to derivative works, which “is a work based upon one or more preexisting works, such as a translation, musical arrangement, dramatization, fictionalization, motion picture version, sound recording, art reproduction, abridgment, condensation, or any other form in which a work may be recase, transformed, or adapted.” The Court clarified that a “qualifying human inventor” is a “natural person,” meaning a human being. The Court reasoned that Dr. Thaler’s ownership of a machine that invents does not give him legal rights to the machine’s creations, and that because DABUS is not a legal person, it cannot transfer any rights to Dr. Thaler.
The United Kingdom is the only country whose highest Court has heard Dr. Thaler’s case. Recently, in August of 2023, the U.S. District Court for the District of Columbia rejected Dr. Thaler’s attempt to copyright artwork that was generated by DABUS because U.S. law requires an inventor to be a human being, as in a natural person. The U.S. Supreme Court denied certiorari in a similar appeal by Thaler in 2023. The U.K decision mirrors similar decisions in the U.S, Germany, Israel, New Zealand, Taiwan, and South Korea, which also rejected Dr. Thaler’s applications labeling DABUS as an inventor.
The U.K. decision is guaranteed to significantly impact future litigation as the use of AI tools to grow. AI tools include software applications that use AI algorithms to perform specific tasks and solve problems. One major query that remains is the philosophical question of whether AI is just a “useful design tool,” “a skilled digital assistant,” or the “actual devisor of the invention.” If there was an instance where AI was considered to be the devisor of an invention, the law would need to adjust to recognize the existence of a non-natural person inventor. Considering the UK’s decision relied primarily on statutory interpretation, the door is still open for legal challenges to the 1997 U.K. Patent Act[MOU1] . Furthermore, the U.K. Supreme Court implemented existing laws and statutes rather than conducting policy changes. While the U.K. decision is another barrier for Dr. Thaler’s plight, it has succeeded in bringing awareness to the public of several countries and poses the very relevant question that remains to be answered: is AI ultimately capable of being the actual devisor of an invention and therefore the owner of that invention?
[MOU1]Should this be 1997 U.K Patents Act like above?