Skip to main content

High Court Holds that AI Machines Cannot Be Inventors, Further Paving Way for Legislative Phase of the DABUS saga

October 1, 2020

By Denis Keseris and Yuen Lai Shek

On September 21, 2020, the High Court of England and Wales dismissed an appeal and upheld the decision of the UK Intellectual Property Office (UKIPO) that a machine cannot be regarded as an inventor under the UK Patents Act 1977.

The Device Autonomously Bootstrapping Uniform Sensibility (“DABUS”) is a “Creativity Machine” that uses neural networks to generate new inventions. DABUS was created by Dr. Stephen Thaler who applied for two patents in 2018 naming DABUS as the inventor.

In a decision issued by the UKIPO on December 4, 2019, UKIPO Hearing Officer Huw Jones rejected Dr. Thaler’s application for failing to validly name an inventor. Jones held that naming a machine as the inventor would not satisfy the requirements of the Patents Act 1977 because an inventor must be a natural person. The UKIPO also stated that it does not have the authority to provide a different interpretation of the Patents Act 1977.

Dr. Thaler had also filed patent applications at the European Patent Office (EPO) and the United States Patent and Trademark Office (USPTO), with both offices subsequently rejecting the applications. On January 27, 2020, the EPO rejected Dr. Thaler’s applications on the grounds that the designated inventor must be a human being and that a machine would not meet the requirements under Rule 19(1) of the European Patent Convention. This decision is currently pending appeal.

The USPTO also rejected Dr. Thaler’s applications for similar reasons on April 22, 2020. The office acknowledged the policy concerns raised by Dr. Thaler, but emphasized that it would be up to Congress to change the law.

Similarly, the High Court’s Hon. Mr. Justice Marcus Smith alluded to handing the matter over to legislators by stating that “[t]he questions raised by the appellant are undoubtedly interesting: but they are interesting in terms of legal policy regarding artificial intelligence and raise no matter of interest on an appeal”.

This echoes the UKIPO hearing officer’s comments in the original UKIPO decision: “I have found that the present system does not cater for such inventions and it was never anticipated that it would, but times have changed and technology has moved on. It is right that this is debated more widely and that any changes to the law be considered in the context of such a debate, and not shoehorned arbitrarily into existing legislation”.

Content shared on Bereskin & Parr’s website is for information purposes only. It should not be taken as legal or professional advice. To obtain such advice, please contact a Bereskin & Parr LLP professional. We will be pleased to help you.

Author(s):

Denis Keseris Denis Keseris
B.A.Sc. (Elec. Eng.), Chartered Patent Attorney (GB)
Partner
514.871.2937  email Denis Keseris