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PROTECTION OF ARTIFICIAL INTELLIGENCE ORIGINATED INVENTIONS: THE DABUS/THALER EFFECT

This guest post is authored by Dr. Athira P S, Director, Centre for Intellectual Property Rights, at National University of Advanced Legal Studies (NUALS), Kochi.


Image Credits: https://www.wipo.int/portal/en/



1. INTRODUCTION


Bloomberg, in 2016, reported an interesting incident on something known as ‘Pseudo-AI’, by looking into the practices of certain companies employing low paid workers to ‘act’ in the digital space as ‘bots’. What can be termed as a ‘Wizard of Oz’ effect, wherein the mystique surrounding Artificial Intelligence (“AI”) is thought to overpower its contemporary scope and applications, is relevant here. Some authors opine that perceiving, consequently believing, and ultimately acting on the notion that AI is more creative and smarter than human beings, may even be counterproductive.[i]


Scientists and engineers have so far considered computers and AI as tools or mediums that process human-provided inputs and act under human supervision. Furthermore, AI-assisted inventions or AI-implemented inventions have been granted patents universally. However, recently, the premise that AI entities can be as inventive and ‘smart’ as, if not more than, human inventors, has transcended science fiction to reality to a certain extent, through the filing of numerous patent applications for independent AI-generated inventions in different jurisdictions.


The World Intellectual Property Organization (“WIPO”) has discussed the relevance of AI in intellectual property over its Trend Reports as well as conversations among different stakeholders. As per WIPO, AI lacks a universally accepted definition, and it uses the phrase ‘deep supervised machine learning’ while clarifying that AI is a branch of computer science that aims to develop systems and machines capable of performing tasks that have been, so far, the exclusive domain of human intelligence. Depending on the task or area of technology, different subsets such as machine learning, deep learning, NLP, etc., may be employed.


2. THE DABUS CONTROVERSY AND RESPONSES FROM PATENT OFFICES


The DABUS (“Device for the Autonomous Bootstrapping of Unified Sentience”) is an AI entity, invented by Dr. Stephen L Thaler. He classifies DABUS as a ‘swarm of many disconnected neural nets’ with interrelated memories, while others have identified it as ‘a type of connectionist artificial intelligence’ or as a ‘complicated creativity machine’. As per Dr. Thaler, DABUS is the inventor of Food Container and Devices and Methods for Attracting Enhanced Attention.


For this purpose, patent applications[ii] were filed at the European Patent Office (“EPO”) with a priority date of November 7, 2018, for certain inventions – fractal food container and neural flame for attracting enhanced attention – naming DABUS as the inventor. Here, Dr. Thaler, as the inventor of DABUS itself, was the applicant. Later, applications were also filed at the United Kingdom Intellectual Property Office (“UKIPO”), United States Patent and Trademark Office (“USPTO”) and under the Patent Cooperation Treaty (“PCT”) system.


Dr. Thaler argued that the DABUS is the inventor of these inventions and that Dr. Thaler himself must be considered as the applicant, and raised the following arguments:

  1. Machines cannot own patents, and that as the employer and/or owner of DABUS, as well as a successor in title, Dr. Thaler is the rightful applicant.

  2. Even when asked to modify the application and remove DABUS as the inventor, he argued that to do so would be immoral and contrary to the concept of moral rights of inventors, and skew the public notice function of the application.

  3. The basis of the patent system being acknowledgement and incentivization of inventions, grant of inventorship to machine inventors would, in turn, reward the inventors of such machines.

The EPO rejected the application stating that the inventor must be a natural person. As per the European Patent Convention ("EPC"), a patent shall contain the designation of the inventor and states thus, “However, if the applicant is not the inventor or is not the sole inventor, the designation shall be filed in a separate document. The designation shall state the family name, given names and full address of the inventor”, and clearly indicates that the inventor is envisaged as a natural person only. The EPO further clarified that “Al systems or machines can be neither employed nor can they transfer any rights to a successor in title”, while acknowledging Dr. Thaler’s ownership over the output of DABUS, as its owner. It clarified that since a machine is designated as the inventor the application “does not meet the formal requirements under the EPC (Article 81, Rule 19(1) EPC) and further that things cannot claim rights, even if they are ‘named’.”


The applications filed at the UKIPO and the USPTO [iii] were also rejected, on technical grounds and formality requirements. In the UK, this decision was appealed to the High Court of England and Wales, Special Patents Court, where Dr. Thaler lost. The court clarified that since DABUS is not a natural person, it cannot own rights, and therefore cannot transfer them to Dr. Thaler as well. Referring to Section 7 and 13 of the Patents Act and on an ancillary note, Section 3.05 of the Formalities Manual of Intellectual Property Office (IPO), the court rejected the possibility of an AI entity being an inventor. The Formalities Manual was also updated in October 2019, though the IPO denies any connection to the DABUS position.


The American grounds for denial of patent application were also technical and procedural – that the process of ‘conception’ of an invention was the exclusive domain of human creativity. Additionally, the USPTO denied the application holding that the datasheet was not filled duly with names of the natural persons who alone can be listed as inventors. It had issued a Notice to File Missing Parts, stating that the inventors should be identified by their ‘legal name’. While the final judgment in the appeal filed by Dr. Thaler [Thaler v. Iancu, et al. (No. 1:20-cv-00903)] is pending, indications do not seem too bright on the success of his position.


To sum up, in all these jurisdictions, the claim of Dr. Thaler was that the patent must be granted as applied because, while Dr. Thaler is a person, he’s not the inventor; and simultaneously, while DABUS is the inventor, it is not a person. This argument was not accepted. However, it is pertinent to note that all patent jurisdictions do not formally insist on a natural person being named as the inventor, for e.g., Israel,[iv] where both DABUS and Dr. Thaler are listed as applicants, while the former alone is named as the inventor.


3. AI INVENTORS : INDIAN PERSPECTIVE


The PCT National Phase Application for the DABUS inventions was filed in India, published under Section 11A of the Patents Act, 1970 on March 19, 2021. In India, even though ‘true and first inventor’ is not qualified in the legislative language, in practice, the inventor is a natural person, i.e., an individual or a group of individuals and an assignee may be a natural person or a legal person such as a company, university, etc. Section 7(3) states that if the inventor is not the applicant, a declaration of proof of inventorship by the inventor must be filed. This theme is carried forth in Sections 10 and 28 as well, which detail the significance of the declaration of an inventor as well as the mention of the inventor as such in the patent, respectively.


As in the case of DABUS, if it becomes necessary for the individual owner of the AI system to designate himself as the inventor to circumvent or overcome potential hurdles of opposition from the Patent Office, Section 64(1)(j) becomes crucial – which states that if the patent was ‘obtained on a false suggestion or representation’, it may be revoked. Sections 25, 52, and 64 also emphasize the requirement for full and correct disclosure of the background and details of the invention, including names of inventors. It is noteworthy that the Indian legal system recognizes that a patent not only confers economic rights but also that the actual creator must be credited with attribution and acknowledgement of his inventiveness and creativity. Evidence may be drawn from the Justice N. R. Ayyangar Committee Report, 1959,[v] which states the following about an inventor in a patent: