DABUS: the EPO on the possibility to name an Artificial Intelligence as inventor

On 14 September 2022, the European Bulletin reported the rejection of the patent application presented by Dr. Thaler, who indicated an artificial intelligence as inventor.

DABUS is the name of the machine designed by the American scientist Dr. Stephen Thaler (acronym for device for the autonomous bootstrapping of unified sentience). The machine is composed by two artificial neural networks able to elaborate known information and create new innovative ideas. Briefly, Dr. Thaler’s algorithm allows the machine to develop original solutions but also to evaluate in a “critical” way the ideas generated by the interconnections of the system in order to determine the possibilities of success and the inventive character.

In 2018, DABUS has independently ideated two original inventions: the first is a food container, the second is a light device that attracts attention in emergency situations. The inventions were object of two distinct patent applications presented almost at the same time in many states – among which the United Stated of America, the United Kingdom, South Africa, Australia and Europe –, sparking a global debate on the role of artificial intelligence in the current context.

Regardless of the last negative statement of the EPO, the DABUS case showed that the different receiving Offices were not perfectly aligned and, above all, that the interpretations of the normative dispositions in theme of innovation struggle to keep up with technological evolution.

At first USA, UK, Australia and Europe had indeed rejected the two patent applications for the same reason: the designated inventor of the patent applications must be a natural person with juridical capacity.

Despite the peculiarities of the different norms, the indication of the “name” of the inventor of the solution to be patented is always requested. To bypass this information requested by the official forms, Dr. Thaler gave a name to his machine, DABUS, and, to summarize, during the many proceedings he justified his legitimization to submit the applications as the owner and creator of the machine itself. On this matter, Dr. Thaler stated that also the public had the right to know who the real inventor is and how the invention had been created.

But this reconstruction did not convince almost any of the receiving Offices.

In particular, in the United Stated the rejection of the U.S. PTO was motivated mainly based on the impossibility to give the rights to a machine, for being an entity lacking of juridical capacity. Moreover, on the basis of similar motivations, on 14 February 2022, the USA Copyright Office definitely rejected even the request to protect through copyright the work of art created by another machine, also one of Dr. Thaler’s creations.

On 21 September 2021, even the UK Court of Appeal upheld the previous decision of the High Court, rejecting both patent applications because the designated inventor was not a human being. However, the decision was not taken unanimously by the Judges of the Court of Appeal.

In Australia, after the first rejection of the applications, on 20 July 2021 there was instead a judicial grant of Dr. Thaler’s applications by the Australian Court, according to which the notion of “inventor” contained in the Patent Act does not refer exclusively to natural persons. Nevertheless, after the appeal, the Australian Federal Court overturned the decision of the first Judge conforming the Australian position to the one of the UK, USA and Europe.

Even the EPO, in fact, rejected in 2020 the two patent applications. The decisions were then confirmed by the Legal Board of Appeal by the decision published on 5 July 2020 and 4 August 2022 (applications  EP 18 275 163 and EP 18 275 174). In its decision, the EPO argued that, pursuant to the European Patent Convention (EPC), the inventor indicated in the patent applications must be a human being. In support of this conclusion, the Office reported the definition of the word “inventor” on the English dictionaries which, inevitably, refers to human beings. Besides this rigorously literal interpretation of the Convention, EPO highlighted that the designation of an inventor is functional to the grant of a series of rights, assuming thus the necessary juridical capacity of the inventor.

To this day, the only Office in the world which recognized the quality of inventor to DABUS is the South African one: on 24 June 2021 the two patent applications presented by Dr. Thaler were considered compliant to the 1978 Patents Act and were officially published in the South African Patent Journal.

Even though the overall record of DABUS is against Dr. Thaler, it is evident that the positions of the Offices do not coincide perfectly neither at a global level (as South Africa demonstrates), nor internally at local level (as in the case of Australia and the United Kingdom). Therefore, maybe it is too early to write the word “end”.

Ilaria Feriti