LEGAL CROSSROADS – THE DABUS PARADOX IN PATENT LAW
Theyjusvini S – Associate, Dispute Resolution Practice
The AI revolution is proving to be a game-changer in every field and the legal landscape is no exception. The question behind patentability of AI inventions was first triggered by two patent claims filed by Dr. Stephen Thaler, a computer scientist. The Artificial Intelligence system called Device for Autonomous Bootstrapping of Unified Sentience, also called DABUS designed by Thaler, is the other key player in the series of debates and decisions that followed.
SOME DEFINITIONS UNDER THE INDIAN PATENTS ACT, 1970:
A patent is a legal right given to a person, recognising that person as the owner of a particular invention and conferring on him the right to all benefits accrued from the sale, manufacture, or use of such invention by any other person.
An Invention is defined under the Indian Patents Act, 1970 as a new invention or process involving an inventive step and capable of industrial application[1]. Section 6 of the 1970 Act also lays down that either the ‘true inventor’, or his assignee, or legal representative upon death of inventor/assignee respectively, either jointly or individually, can apply for a patent.
PATENTABILITY OF AI INVENTIONS – THE DABUS CASES:
In 2018, Dr. Thaler filed patent claims for a food/beverage container made using the principles of fractal geometry, and a beacon light. In an unexpected move, he named DABUS as the inventor, while claiming ownership of the inventions, and thereby the patent, for himself.
Dr. Thaler filed a string of patent claims in multiple countries across the world, thus pushing several countries to admit the ambiguity in the IP laws especially pertaining to Artificial Intelligence[2], and to rethink the legal limits of who can be an ‘inventor’.
The United Kingdom : Towards the end of 2018, Dr. Thaler filed 2 patent applications for the aforementioned inventions before the UK Intellectual Property Office. Both applications were rejected by the UK IPO on the grounds that DABUS was not a ‘person’ under the UK Patents Act, 1977, and hence, cannot be recognised as an inventor. It was also observed that DABUS had neither rights that could be transferred nor the power to transfer anything that it might own. Dr. Thaler appealed against this decision to the Patents Court, followed by an appeal to the Court of Appeal due to another adverse decision where the view of the Patents Court was upheld. However, Lord Justice Colin Birss had dissented from the majority view in the Court of Appeal. He pointed out that under the 1977 Act, an applicant had to justify his right to be granted a patent, while identifying a person whom they believed to be the true inventor. In his application, Dr. Thaler had established how he was entitled to be granted ownership of the patent, and had submitted DABUS as the person that he believed to be the inventor. Hence, Birss LJ was of the belief that the legal status of the inventor should not have been an impediment to granting a patent to Dr. Thaler. Dr. Thaler appealed before the United Kingdom Supreme Court. Taking into record all the above points of view in the Court of Appeal, the UK Supreme Court in its 2023 decision upheld the decision of the Comptroller to dismiss the application of Dr. Thaler. The bench of the Supreme Court observed that the Court of Appeals had held that “DABUS did not qualify as an inventor within the meaning of the 1977 Act because such an inventor was required to be a person; that there was no general rule of law that any intangible property (including an invention) created by a machine was the property of the machine or the owner of the machine;”[3] The Supreme Court also observed that, while it is not the function of the UK IPO to investigate the accuracy of a genuine statement of fact made in an application, it is also not beyond its scope to question the veracity of a statement that is obviously defective.
European Union : Dr. Thaler had filed his patent claims before the European Patents Office (EPO) at the same time as the applications in the UK. Similar to the UK IPO, the EPO also rejected Dr. Thaler’s patent claims. The EPO, however, added that while an AI System cannot be a sole inventor, the owner of a device that is involved in an inventive activity can be the deemed inventor of the invention. Dr. Thaler challenged the rejection of his patent claims before the Legal Board of Appeal of the European Union, who also went on to reject the appeal in December 2021. The Board of Appeal concluded that under the European Patent Convention (EPC), an inventor must be a person with legal capacity, and hence, the title of ‘inventor’ could not be conferred upon DABUS. Article 81 of the EPC lays down the formal requirement for designation of an inventor, while Article 60 of the EPC confers the right to a European patent upon the inventor, or his successor. The Board of Appeal observed that though the designation is merely a formal requirement and has no consideration upon the patentability of the application, it must be in conformity with Article 60(1), i.e., Article 81 cannot be read independent of Article 60(1). Coupled with Article 60(1), it is implied that the inventor must be a legal person.[4]
Australia : The patent claims filed by Dr. Thaler with the Australian Commissioner of patents in 2019 were rejected. He approached the Federal Court of Australia, and for the first time, Dr. Thaler was answered in the affirmative. The Federal Court held that an AI System can be granted ‘inventorship’. The Commissioner then challenged this decision before the Full Federal Court of Australia. The Full Court overturned the Federal Court’s decision and reverted to the view that an inventor must be a legal person. Left with no other option, Dr. Thaler filed an application for Special Leave before the High Court of Australia (the highest court of law in Australia) to appeal the decision of the Full Court. The High Court did not grant special leave. However, Justice James Edelman observed : If that factual and legal position is correct, and Dr Thaler is not the inventor, then there is a significant hole in the operation of section 15 because it means that you can have an invention but no inventor.[5] This observation has succinctly captured the impasse that the legal systems have been presented with. With this refusal by the High Court, Dr. Thaler is left without further legal remedy before the Australian Courts.
USA : The United States Patents and Trademarks Office (USPTO) in 2019 rejected the patent application filed by Dr. Thaler citing that according to the United States Code (USC), only a natural person can be an ‘inventor’. Upon a petition to reconsider the decision in 2020, the USPTO relied on 35 USC Sections 100, 101 and 115 to reiterate its earlier decision[6], and cited the case of University of Utah v. Max Planck Gesellschaft zur Forderung der Wissenschaften E.V.[7] in which it had been held that an AI system cannot be considered an inventor.[8]
India : Dr. Thaler also filed a Patent application in India in 2019. The Controller General of Patents rejected the application on the grounds that it was not a valid application upon a general reading of Section 2 and Section 6 of the 1970 Act. In addition, under Indian law, only a natural person who has contributed his integrity, skill/technical knowledge and labour is entitled to be an inventor.[9] In fact, while Section 2(s) gives an inclusive definition of the term Person so as to encompass the Government, it is still implied that an entity must either be a human or a legal personality to be a ‘person’.
Germany : The German Patent office, like that of most other countries, rejected the patent application on the grounds that only a natural person may be an inventor. The German patent office suggested that Dr. Thaler may, however, state in his application that an AI system had contributed to the invention for which patent is being claimed. The German Federal Patent Court, while deciding the appeal against the decision of the patent office, observed that the Patent Regulations did not expressly prohibit unnecessary information in the patent applications. This being the case, the applicant is entitled to include additional information, such as the inventive contribution of DABUS in his application. However, the Court stood by the decision of the Patent Office that DABUS cannot be recognised as a ‘sole inventor’.[10]
South Africa : South Africa is thus far the only country that has accepted Dr. Thaler’s submissions after his short-lived reprieve in Australia. The South African Patent Office granted a patent in 2021 as per the application made by Dr. Thaler. DABUS was recognised as the inventor, and Dr. Thaler was granted the patent. However, experts around the world have commented that South African patent law is silent on the definition of an ‘Inventor’, and that South Africa follows a depository system with no substantive manner of assessment for determination of eligibility for the same. So long as there are no defects in the forms filed, the Patent Office does not bring up questions of eligibility. While reporting this development in the DABUS case, the University of Surrey has stated “While patent law in many jurisdictions is very specific in how it defines an inventor, the DABUS team is arguing that the status quo is not fit for purpose in the Fourth Industrial Revolution.”[11]
LEGAL PERSONALITY UNDER EXISTING LAWS:
The existing law in most countries has limited the general definition of a legal person to natural persons, corporate personalities and the Government. When it comes to the scope of a Person under IP law, the definition is much narrower and more strictly construed by the Courts. It is mostly confined to natural persons. However, despite the strict construction of the term under IP law, the broader the scope of a ‘person’ under general law, the more complex the legal standpoint under IP law becomes. While in a few countries like the USA and Germany, patent rights are strictly confined to natural persons, a few other countries, including India, have extended the rights to juristic persons as well. These countries, therefore, face a greater dilemma, because they stand at crossroads, and must decide if they want to take a step back and make the scope narrower by limiting patent rights to natural persons, or if they want to take a step forward and extend the scope further to include AI.
For example, in 2023, a unique decision by a Polish rum company, Dictador, took the world by a storm. In a first, Dictador now has a new CEO – a robotic AI called Mika. Mika is a project that Dictador has collaborated with Hanson Robotics, a Hong-Kong based robotic company, on. Mika is a board member of the company and plays a crucial role in the company’s operations. Mika has stated in a Company video that she can “accurately and swiftly make data-driven decision” because she will be able to factor in numerous angles while making decisions, but within a shorter span of time as compared to a human counterpart. Further, Mika has pointed out that she will be all the more effective and efficient because she is devoid of personal bias. The legal question inevitably follows regarding her ‘personality’ under law, as well as her rights and liabilities. This move by Dictador has triggered several debates and discussions on the legal complexities involved. However, as with most questions involving AI, there are no clear answers.
WAY FORWARD
Though Dr. Thaler’s patent claims have been rejected by various jurisdictions with the exception of South Africa so far, it is pertinent to note that by making this series of applications, Dr. Thaler has brought an evolving question to the limelight. In fact, Dr. Thaler initiated this series of test cases with this very intent. With the phenomenal growth of AI-tools in recent years, it is imperative that we raise questions about rights as well as liabilities under IP laws. Both these aspects have been plaguing the Courts, since it is difficult to attach either a right or a liability to an AI system.
Similar to the question of patentability of AI inventions, there have also been discussions on the authorship and copyright ownership of AI-generated works, which is just as complex as the question of patents. For example, the protection period for a copyright, under the existing Indian law, is 60 years from the demise of the author of the work. However, if we were to attribute the authorship of a creative work to an AI system, the objective of the copyright laws seems defeated, because the AI System is not going to face a ‘demise’.
When Dr. Thaler filed his first patent applications in 2018, he had gone on to initiate a similar test case with respect to Copyright law. He filed a copyright claim with the United States Copyright Office (USCO) for an artwork called ‘A Recent Entrance to Paradise’, with one of his AI algorithms, ‘Creativity Machine’ named as the ‘creator’. In this case, the USCO rejected the claim on the grounds that while it is possible for an AI system to generate creative work, in order to copyright such work, there must be a human intervention/ creative step that contributed to its creation.
India, as early as 1994, contemplated an eventuality where creative works may be computer generated, and amended the Copyright Act, 1957 accordingly. There is space in Indian law to recognise the designer of the computer algorithm as the author, since such designer is indirectly ‘the person who causes the work to be created’[12]. However, even in this case, Indian law has not recognised AI as a legal person capable of being granted sole authorship.
While the laws as they stand today are not well equipped to hold an answer to these complexities, with the questions that have now been kindled in this regard, it might be time for a reconsideration and analysis of the extent of AI’s abilities and the corresponding legal safeguards required.
[1] See Section 2(j) of Indian patents Act, 1970
[2] The year that was for DABUS, the world’s first AI ‘inventor’ | Inside Tech Law | Global law firm | Norton Rose Fulbright
[3] https://caselaw.nationalarchives.gov.uk/uksc/2023/49
[4] https://www.epo.org/en/law-and-practice/boards-of-appeal/communications/press-communique-6-july-2022-decision-j-820-ai#:~:text=The%20Legal%20Board%20of%20Appeal%20confirmed%20the%20decision%20of%20the,inventor%20in%20the%20application%20form.
[5] https://www.austlii.edu.au/cgi-bin/viewdoc/au/cases/cth/HCATrans/2022/199.html
[6] https://www.uspto.gov/web/offices/pac/mpep/s2104.html#:~:text=101%20Inventions%20patentable.,35%20U.S.C.
[7] 734 F.3d 1315, 1323 (Fed. Cir. 2013)
[8] https://www.uspto.gov/sites/default/files/documents/16524350_22apr2020.pdf
[9] V.B. Mohammed Ibrahim v. Alfred Schafranek
[10] https://ipwatchdog.com/2022/04/20/german-decision-provide-answer-ai-inventorship/id=148555/#:~:text=According%20to%20an%20unofficial%20translation,should%20not%20necessarily%20be%20prevented
[11] https://www.surrey.ac.uk/news/worlds-first-patent-awarded-invention-made-ai-could-have-seismic-implications-ip-law
[12] See, Section 2(d)(v) of the Copyright Act, 1957