The influx of AI in various businesses intricate has forced the companies to rethink the base of a business and change their attitude towards more prospective business strategy including innovation from AI. The Special Patent Court of High Court of England & Wales in the case of Stephen L Thaler Vs Comptroller General of Patents, Design and Trade Mark  ([2020] EWHC 2412 (Pat)) clarified that AI cannot be granted a patent.

Brief of the case

This case is a celebrated case of the United Kingdom ('UK'). It starts from two patent applications, GB1816909.4 and GB1818161.0, respectively filed by Thaler in his name, in the United Kingdom Intellectual Property Office ('IPO') for the grant of patents. The application specifies that Thaler was not an inventor, which is possible as Section 30 of the Patents Act 1977 ('the Act') states that the right to apply for a patent is transferable. IPO subsequently notified Thaler to file the statement of inventor-ship and the right to grant patents according to Section 13 of the Act which was Patent Form 7. Thaler filed the Patent Form 7 where he stated that the inventor is none other than an AI named Device for the Autonomous Bootstrapping of Unified Sentience ('DABUS') and since he is the owner of the AI is entitled to obtain the right to grant of the patents. To put it simply, Dabus is the inventor, and Dabus is owned by Thaler. Due to this ownership of Dabus by Thaler, Dabus has transferred the right to grant patents to Thaler. So inherently, the contention assumes that the Dabus is entitled to have patents and hence it can transfer it to its owner Thaler. This inherent assumption put in the case has caused the conundrum that whether an AI can be granted a patent, leave alone transferring it. The decision of IPO was negative, which was appealed to the High Court of England and Wales, Special Patents Court which upheld the IPO's decision.

The Court's decision

The decision of the court was primarily based upon the fact that Dabus was not a natural person; hence, he is not entitled to own any intellectual property. Keeping this as the principle, Court rejected the contention that Dabus can transfer the right it holds as it being the inventor. It is very important to understand that the main contention being made by Dr. Thaler was not to grant the patents to Dabus. Even Thaler in his arguments has made it clear that AI cannot hold any property being lacking person hood. Thaler acquired the right under the ownership of the inventor and is, therefore, the successor in the title of the inventor.

Perhaps if Thaler would have not specified in his application that the inventor is Dabus, there were probable chances that he might have ended up getting the patent. Reading the arguments, the prior presumption by Thaler that Dabus is an inventor is highly misconstrued.  When Thaler knows that Dabus cannot hold patents as per his contentions, his assumption that the inventor-ship can be transferred is without any base. If one cannot hold the patents, he cannot transfer.

The Court's reasoning and the law 

The case revolves around Section 7 and 13 of the Patents Act and Section 3.05 of the IPO's formality manual. The author feels that even if the interpretation done by the court was a bit narrow, it tried to align with that of the existing legislation but again in a manner that could be questioned.

On a bare reading of Section 3.05 of the IPO formality manual, one can misunderstand it on the premise that AI inventor is not acceptable as it does not identify a person. But it has to be understood that the manual only specifies the process of how something has to be done. Interpreting 3.05 only tells us the process that AI inventor is not acceptable but it does not explicitly prohibit AI to be granted the inventor-ship. IPO made it very clear that the dismissal of Thaler's contention was not based on the premise of Section 3.05.

What policy implications can be taken?

The rejection of granting of the patent to Dabus can have large policy implications for the whole world. AI is the future, and businesses are becoming dependent upon AI. Not granting the patents sparks a new debate as to who will be the owner of the AI inventions. This case was a missed chance to formulate a policy that could at least bring some clarity for the inventions. The author respects the court's decision and the limitation being propounded by having a separation of power. But the author feels that the court could, at least, have framed some guidelines which can specify the future of such cases. To dismiss the case giving a simple reason, that it being a larger policy issue, cannot be a sufficient answer. One cannot deny the fact that these cases will not come up. The author will reiterate two reasons that will substantiate the lack of policy implication and therefore, it is a missed chance. Firstly, one is not able to effectively interpret what can 'person' constitutes. And secondly, not able to effectively deal with the primary subject matter that who will be the owner of AI-related inventions? Instead, the court relied upon that AI cannot be granted patent since they are not a person and left the question of who should be the owner of AI inventions to a larger policy issue.

Author: Saransh Chaturvedi (an advocate) currently pursuing LLM from Rajiv Gandhi School of Intellectual Property Law (IIT Kharagpur).

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