Artificial Intelligence -The DABUS Decisions
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| Author Alisneaky Licence CC BY-SA 4.0 Source Wikipedia Artificial Neural Network |
Jane Lambert
According to The Artificial Inventor Project website's FAQ page, "DABUS" stands for "Device for Autonomous Bootstrapping of Unified Sentience". The "About the Team" page of the same website states that DABUS was created by Dr Stephen L Thaler. Dr Thaler has applied for European patents for two inventions that were invented by DABUS, namely a food container (application number 18275163) on 17 Oct 2018 and devices and enhanced devices and methods for attracting enhanced attention (application number 18275174) on 7 Nov 2018.
In Artificial Intelligence and Intellectual Property 27 Dec 2019 I mentioned a press release dated 20 Dec 2019 stating that the EPO had refused those patent applications (see EPO refuses DABUS patent applications designating a machine inventor 20 Dec 2019). The press release added:
'After hearing the arguments of the applicant in non-public oral proceedings on 25 November the EPO refused EP 18 275 163 and EP 18 275 174 on the grounds that they do not meet the requirement of the EPC that an inventor designated in the application has to be a human being, not a machine. A reasoned decision may be expected in January 2020."
The EPO has now published the grounds for its decisions at Grounds for the EPO decision of 27 January 2020 on EP 18 275 163 and Grounds for the EPO decision of 27 January 2020 on EP 18 275 174. The two proceedings were consolidated because the applicant, his representative and the underlying facts concerning the designation of the inventor were identical. Because of the consolidation, the grounds for the decisions are set in almost identical terms.
The grounds record that the applications were filed with the British Intellectual Property Office and forwarded to the European Patent Office. In each case, the field for indicating the inventor in the Request for grant of a European Patent was left unfilled and no separate designation of the inventor was filed in either case. On 17 Dec 2018, Dr Thaler was invited to remedy the deficiency by filing a designation of the inventor in accordance with art 81 of the European Patent Convention ("EPC") and rule 19 (1) of the Implementing Regulations within 16 months of the date of filing. He was informed that the time limit would be deemed to have been met if he supplied the information before the technical preparations for publication of the applications had been completed but was warned that that period could not be extended. He was also warned his applications would be refused under art 90 (5) EPC if he failed to do so by that time.
Ob 24 July 2019 Dr Thaler filed Designation of inventor forms in which he named DABUS as inventor explaining that DABUS is a "correctionist artificial intelligence" from which he had acquired the right to apply for the inventions as DABUS's employer. In further submissions dated 2 Aug 2019 Dr Thaler submitted that he was entitled to the invention as DABUS's successor in title. He added that the machine had identified the novelty of its ideas before any human had done so and had therefore inventor. Its owner was entitled to the right to apply for patents for its inventions as assignee of any IP rights to which DABUS was entitled. He contended that acknowledging machines as inventors would protect the moral rights of human inventors and recognize the work of the machines' creators.
On 30 July 2019 Dr Thaler requested oral proceedings which the Receiving Section of the EPO fixed on 13 Sept 2019. In its summons, the Receiving Section noted that the application was deficient in that it failed to meet the requirements of art 81 of the Convention and rule 19 (1) of the Implementing Regulations. It stated that the designation of an inventor must contain the inventor's surname, forenames and full postal address. Dr Thaler replied on 25 Oct 2019 that rule 19 (1) does not require an inventor to be human and that the reason for requesting the inventor's full name and address was to identify the inventor properly. That had already been done in DABUS's case. He added that requiring an inventor to state his surname and forenames would discriminate against human inventors with only one name. There was nothing in the Travaux Préparatoires of the Convention or Implementing Regulations that excluded inventions by machines.
The hearing took place on 25 Nov 2019. Dr Thaler repeated his written submissions adding that in the UK neither the courts nor the IPO can challenge a designation of inventor. Only the person entitled to an invention can do that. He also contended that refusing to register patents for inventions that machines had created would discriminate against the owners of the machines.
The Receiving Section refused Dr Thaler's applications on the grounds that they did not comply with the requirements of art 81 and rule 19 (1) in that they failed to state the full name and address of the inventor as required by rule 19 (1), the applicant's entitlement to the invention and an inventor's signed written consent. Identifying the inventor as "DABUS" did not meet those requirements because names given to things did not equate to the names of people. There were various policy reasons for requiring an inventor to be a human being. It was in line with the practice of the contracting parties to the EPC and with decisions of courts and patent offices overseas including those of China, the USA, South Korea and Japan. Nowhere was there a law expressly allowing a machine to be designated as an inventor. The application was also defective in that the application did not state Dr Thaler's title to the invention. The machine was not his employee and it was incapable of transferring any rights to him.
The grounds also state that there is a public interest in knowing the identity of an inventor. There was nothing discriminatory in the EPO's interpretation of art 81 and rule 19 as it does not determine ownership of inventions. That is a matter for each contracting party's national law.
Dr Thaler has two months in which to appeal against the Receiving Section's decision to the EPO's boards of appeal,
Anyone wishing to discuss this article or artificial intelligence and intellectual property generally may call me during British office hours on +44 (0)20 7404 5252 or send me a message through my contact form.
The grounds record that the applications were filed with the British Intellectual Property Office and forwarded to the European Patent Office. In each case, the field for indicating the inventor in the Request for grant of a European Patent was left unfilled and no separate designation of the inventor was filed in either case. On 17 Dec 2018, Dr Thaler was invited to remedy the deficiency by filing a designation of the inventor in accordance with art 81 of the European Patent Convention ("EPC") and rule 19 (1) of the Implementing Regulations within 16 months of the date of filing. He was informed that the time limit would be deemed to have been met if he supplied the information before the technical preparations for publication of the applications had been completed but was warned that that period could not be extended. He was also warned his applications would be refused under art 90 (5) EPC if he failed to do so by that time.
Ob 24 July 2019 Dr Thaler filed Designation of inventor forms in which he named DABUS as inventor explaining that DABUS is a "correctionist artificial intelligence" from which he had acquired the right to apply for the inventions as DABUS's employer. In further submissions dated 2 Aug 2019 Dr Thaler submitted that he was entitled to the invention as DABUS's successor in title. He added that the machine had identified the novelty of its ideas before any human had done so and had therefore inventor. Its owner was entitled to the right to apply for patents for its inventions as assignee of any IP rights to which DABUS was entitled. He contended that acknowledging machines as inventors would protect the moral rights of human inventors and recognize the work of the machines' creators.
On 30 July 2019 Dr Thaler requested oral proceedings which the Receiving Section of the EPO fixed on 13 Sept 2019. In its summons, the Receiving Section noted that the application was deficient in that it failed to meet the requirements of art 81 of the Convention and rule 19 (1) of the Implementing Regulations. It stated that the designation of an inventor must contain the inventor's surname, forenames and full postal address. Dr Thaler replied on 25 Oct 2019 that rule 19 (1) does not require an inventor to be human and that the reason for requesting the inventor's full name and address was to identify the inventor properly. That had already been done in DABUS's case. He added that requiring an inventor to state his surname and forenames would discriminate against human inventors with only one name. There was nothing in the Travaux Préparatoires of the Convention or Implementing Regulations that excluded inventions by machines.
The hearing took place on 25 Nov 2019. Dr Thaler repeated his written submissions adding that in the UK neither the courts nor the IPO can challenge a designation of inventor. Only the person entitled to an invention can do that. He also contended that refusing to register patents for inventions that machines had created would discriminate against the owners of the machines.
The Receiving Section refused Dr Thaler's applications on the grounds that they did not comply with the requirements of art 81 and rule 19 (1) in that they failed to state the full name and address of the inventor as required by rule 19 (1), the applicant's entitlement to the invention and an inventor's signed written consent. Identifying the inventor as "DABUS" did not meet those requirements because names given to things did not equate to the names of people. There were various policy reasons for requiring an inventor to be a human being. It was in line with the practice of the contracting parties to the EPC and with decisions of courts and patent offices overseas including those of China, the USA, South Korea and Japan. Nowhere was there a law expressly allowing a machine to be designated as an inventor. The application was also defective in that the application did not state Dr Thaler's title to the invention. The machine was not his employee and it was incapable of transferring any rights to him.
The grounds also state that there is a public interest in knowing the identity of an inventor. There was nothing discriminatory in the EPO's interpretation of art 81 and rule 19 as it does not determine ownership of inventions. That is a matter for each contracting party's national law.
Dr Thaler has two months in which to appeal against the Receiving Section's decision to the EPO's boards of appeal,
Anyone wishing to discuss this article or artificial intelligence and intellectual property generally may call me during British office hours on +44 (0)20 7404 5252 or send me a message through my contact form.
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