AI inventorship on the horizon: Part 1

Introduction

When you hear the word “inventor,” who comes to mind? There are many notable names that you likely thought of. Out of all the names, were any of them an artificial intelligence (AI) machine? They soon might be.

In Canada and many other jurisdictions, there are currently no patents granted to an AI inventor. However, the presence of AI is constantly growing and transforming industries around the world. In South Africa, a patent was recently granted to an AI inventor named DABUS – likely the first globally. No doubt, patent systems around the world are starting to grapple with a key question: should an inventor be an AI machine?

In Part 1 of this blog post series, we discuss the AI inventor DABUS and the subject matter underlying the granted South African patent. In Part 2 we will dive deeper into legal considerations surrounding whether an AI machine can, or should, be an inventor and/or owner of a patent by examining the treatment of analogous patent applications in other jurisdictions, and we consider how a similar application might be treated in Canada. Lastly, in Part 3 we will cover policy issues and implications for the future of AI inventorship.

Who, or what, is DABUS and what did DABUS Invent?

In 2018, Dr. Stephen Thaler filed a patent application with the United Kingdom Intellectual Property Office (UKIPO), the European Patent Office (EPO), the United States Patent and Trademark Office (USPTO) and other jurisdictions under the Patent Cooperation Treaty (PCT). However, Dr. Thaler was not listed as the inventor for these patent applications. Rather, the sole inventor was listed as “Device for Autonomous Bootstrapping of Unified Sentience,” also known as DABUS for short. DABUS is an AI machine created by Dr. Thaler and is described as being capable of conceiving of inventions independently. It consists of two neural networks that work together to (1) generate ideas and (2) evaluate and filter those ideas based on novelty, utility, or value. This framework essentially mimics how the human brain functions.

The patent applications filed in South Africa and other jurisdictions by Dr. Thaler relate to two inventions: a beverage container and a controllable flashing light.¹ Dr. Thaler claims that DABUS used its neural network to develop a fractal beverage container that is capable of shapeshifting via its flexible structure to create pits and bulges to tie containers together without using external components. DABUS also developed a flickering light that mirrors brain activity and is designed to attract people’s attention in emergency situations.

An AI machine’s first patent

In many of the jurisdictions in which these patent applications were filed, they were rejected by the patent office on the basis that an AI machine cannot be an inventor. The UKIPO, the EPO, and the USPTO concluded that only a natural person (i.e., a human being) can be an inventor. Moreover, for named inventors to benefit from and exercise the rights granted under the patent, they must have a legal personality – something DABUS does not have.

However, on 28 July 2021, DABUS was granted the world’s first patent for an AI-created invention by the Companies and Intellectual Property Commission of South Africa (CIPC), which was published in South Africa’s Patent Journal. DABUS is listed as the inventor and Dr. Thaler as the applicant.²

It should be noted that South Africa does not have a substantive, formal patent examination process like Europe, the UK, and the US. This means the CIPC does not investigate the substance of the patent or process, but merely verifies that the form of documentation is properly filled out. Moreover, South Africa patent laws do not define the term “inventor,” whereas other jurisdictions contain specific statutory language defining what constitutes an inventor.

For example, Article 58 of the European Patent Convention states that a patent application “may be filed by any natural or legal person, or any body equivalent to a legal person by virtue of the law governing it.”³

In the UK, section 7(3) of the Patents Act 1977 provides that “…‘inventor’ in relation to an invention means the actual deviser of the invention ….”⁴ While section 7(3) does not expressly state that an inventor must be a person, the English Court of Appeal relied on the dictionary definition of the term “deviser” as “a person who devises; a contriver, a planner, an inventor.”⁵ Moreover, the English Court of Appeal held that an inventor must be a person, given the language in section 7(4) of the Patents Act 1977.⁶

In the US, 35 U.S.C. § 100 and 102 define an “inventor”⁷ as an individual and that only a “person shall be entitled to a patent.”⁸ 

In Canada, section 27(1) of the Patent Act states that patents shall be granted to “the inventor or the inventor’s legal representative.”⁹ The Supreme Court of Canada has interpreted “inventor” to mean “the person or persons who conceived of” the invention.¹⁰

First but (maybe) not the last

Given that South Africa does not have a formal patent examination process or a statutory definition for “inventor,” the South African patent granted to DABUS is likely not representative of jurisdictions like Canada, where the patent process is more rigorous. Moreover the acceptance in South Africa does not take into consideration validity issues such as those tested during litigation. Even if a patent office accepts the filing of an application with an AI inventor and / or issues such a patent, whether such a patent can withstand the scrutiny of a validity challenge is yet to be determined.

However, the grant does raise two key questions to consider: (1) whether an AI machine can be an inventor; and (2) whether an AI machine can own a patent. Recently, the Australian Federal Court considered these two questions and overturned the Australian Patent Office’s rejection of Dr. Thaler’s patent application, finding that DABUS could be an inventor. That does not mean the Australian application is necessarily granted – it must still go through substantive examination to see if it meets all other requirements; however, as we will see in Part 2 of this blog post series, the Australian decision may set the stage for AI inventorship in Canada and other jurisdictions. 

The authors would like to thank students Marisa Kwan and Aaqib Mahmood for their assistance in preparing this update.