DABUS

DABUS

Introduction

In the recent years, the world of intellectual property law had the divided opinion on DABUS, an artificial intelligence that filed for patent invention. Even though all of the countries such as Australia, United Kingdom and USA have rejected the plea of an AI System to be an inventor of a patent, there has been division of opinion between the judges while ruling such rejection as well. This unique case of DABUS has forced the authorities herein to rethink the definition of IPR and the protection of it thereof and the prospect towards AI system as a whole. In this section, we shall discuss the curious case of DABUS AI system and critically dissect whether an AI system can be given the rights to file for a patent invention or not and whether an invention by an AI system can be held as a rightful invention before the eyes of law or not.

What is DABUS?

In the year of 2018, one Stephen L. Thaler filed one patent application before the appropriate UK authority to patent one invention and to the utter surprise of the authorities, an AI system was registered as being the inventor of the same. Again, after that, on 17th September, 2019, Thaler filed another application of patent before the IP Australia authority who found it to be inconsistent with the Patent Act, 1990 . The same decision was upheld by the European Patent Office, United Kingdom Intellectual Property Office and the USA rejected and dismissed the same on the ground of AI system to be incompatible to be an inventor as well .

However, after being rejected, Thaler essentially appealed against each of the decisions of these countries before the Higher Court authorities and as of today, two EPO decisions are under appeal and the order of the IP Australia has been overturned by the Federal Court where the court has instructed the IP Australia to rethink into the matter.

Hence, it is only the decision of the United Kingdom in the case of Stephen L. Thaler v. Comptroller General of Patents, Design and Trade Mark , that has enabled a concrete decision of the same subject and provided a conclusive ruling while other countries are still divided by opinions.

DABUS Ruling before the UK Intellectual Property Office

As it has been mentioned before that the case of Stephen L. Thaler v. Comptroller General of Patents, Design & Trade Mark is the latest celebrated case of the United Kingdom on the DABUS controversy and the ruling on the same has provided the IPR with valuable precedent that can be followed for several other countries in the future as well. In this instant case, two parallel applications for patent were filed before the UK intellectual property office and in the applications thereof, it was specifically mentioned that Stephen Thaler was not the inventor the applied patents, even though the application for the same was filed by Thaler only. As it is pertinent under the Patents Act, 1977 , a right to apply for patent is transferable and as such Thaler was directed to provide for the inventor’s name in the application under section 13 of the Patents Act, 1977 in pursuant to grant of the patent under the patent form . In the form 7, Thaler essentially filed the name of an AI, Device for the Autonomous Bootstrapping of Unified Sentience or ‘DABUS’. Thus, DABUS was filed to be the inventor of the patents that was applied before the UK authority and DABUS is owned by Thaler. Thus, the right to apply for patent is thereby transferable from DABUS to Thaler. On this very assumption the patent was filed which essentially created a conundrum before the IPO of the UK authority as to whether an AI system can file for a patent invention and further it was held by the UK IPO that an AI system cannot file for a patent application and as such the DABUS cannot be held to be inventor the patents and only a natural person can be regarded as the owner of an invention.

Later the same matter was appealed against the IPO authority of UK before the High Cour of England and Wales and the UK High Court also upheld the decision of the UK IPO authority and held that in the case of patent invention filing, only natural person can file for such application and it is not contented for an AI system to be registered as an inventor of any patent whatsoever. It is to be mentioned that while Australia and the EPO decisions are still pending on the same case, USA has followed the path of UK and necessarily declared the that AI system cannot said to have been an inventor for a patent registration as well .

Critical Discussion of UK judgement on DABUS Ruling

In this particular case of DABUS, Justice Marcus has essentially pointed and explained that under the Patents Act, 1977, an AI system cannot hold to be an inventor for a patent whatsoever. However, it is pertinent to mention that the UK court also held the option open that for the purpose of a unique case like this, the owner of the AI entity itself, can be registered as the inventor of the particular patent as under the Patents Act, 1977, it is only the natural persons who can be the owner of an invention.

If the same is to be critically discussed in the light of the UK Intellectual Property Law, it can be observed under UK Copyright, Design and Patents Act, 1988 that it essentially reiterates under section 9 of the Act of 1988 that any artistic, literally, dramatic or musical work that are said to be computer generated, it would be the author of the same who provides for the necessary arrangement herein and not the computer itself. Although, no such clear identification of the legal provision has been mentioned under any of the invention or Patents Act of UK but it can be assumed that the ruling in the above-mentioned case essentially relied on the section 9 of the Copyright, Design and Patents Act, 1988 .

Also, for the purpose of critical commentary on the same, section 7(2), 7(6), 7(3) and 13 of the Acts of 1988 are extremely important. While section 7(2), 7(3) and 7(6) of the Acts of 1988 essentially talks about who the inventor would be for the purpose of registering a particular patent and whether the right to file for a patent shall be transferable or not, section 13 of the same Act speaks of the right of the inventor as a whole.

Thus, in consonance with the court’s ruling in the same matter, it can be critically discussed that the UK court while holding up the judgement of rejection of the patent registration, essentially held that DABUS shall not be regarded as a legal person and the any in-depth explanation as to the nature of the inventor was avoided. A person can be natural or juristic but UK High Court essentially did not explore the depth of such explanation and simply held that being an AI system, DABUS shall not come under the term of a person, which was presumably considered to be of human nature at stretch. Hence, it can be critically said that UK Court’s direction on the same is narrowed down to one presumption that only human being can be the inventor of a patent registration and thereby rejected all other pleas and explanation regarding the AI invented world. Thus, the UK judgement lacked conscience and the higher court’s power to provide for better interpretation of law .

Also, the UK court essentially relied upon the judgement of Yeda research and development Company Ltd. v. Rhone-Poulenc Rorer International Holding , which states that section 7 of the Act of 1988 is exhaustive in the case of determining who would be entitled for the grant of the patent by the UK authority. However, the same section has been read with section 13 of the Act as well and according to the implications of section 13 herein, there are no grounds whatsoever that negates the AI system’s position to be an inventor in its own invention and obtain a patent for the same as well. Hence, it can be critically states and discussed that the UK high court provided with the judgement in respect to section 7 of the Act with a narrow implication that does not provide for a bigger scope to understand and expand the subject matter of AI system but necessarily narrows it down .

Thus, in critically understanding the context and the legal provisions of the same, it can be said that the ruling of the DABUS by the UK High Court necessarily sparks the debate on the subject matter of AI inventions and provides for narrower and complicated version for the future of the AI system. This case of DABUS does not provide any scope for necessary understanding of the AI invention and whether AI invention would be subjected to the sole owner, even though the owner is not the inventor or does not possess the intellectual for the same. This shall create a problematic aspect in the AI invention and necessarily restrict the scope of the AI system in future. Also, the UK court’s strict prohibition regarding the implication and interpretation as to the contention of person only states that the DABUS plea was necessarily rejected by the UK High Court only to satisfy the present need and essentially shows the orthodox mindset that cannot welcome the future. Thus, it can be stated that DABUS case essentially shuts down further better progress in the case of AI invention and AI system.

Conclusion

Although the field of exploration has been narrowed down in the case of DABUS, it is only the start of the battle. It cannot be denied that the future of AI invention shall be started with the Stephen Thaler case of DABUS and this case of UK shall be an important source of legal provisions in order to expand the provisions of the AI invention in the future. Also, UK judgement shall be examined better after the Australia judgement comes forward and the appeal before the EPO is decided further as well. While USA has provided with a better explanation of rejecting AI invention with consonance with their own legal implication, UK High Court has essentially failed at the same and it can be stated that DABUS could be have opened the scope for AI systema and AI invention in UK and the UK court has specifically denied the same by complicating the matter of providing the status of inventor to the owner of the particular AI system.