What do an
AI machine and
a monkey have
in common?
4 It is believed that as early as the
Paleolithic period, distinguished by the
original development of stone tools
over three million years ago, mankind
has been inventing and improving. The
concept of inventing has always been
regarded as a creative mental activity
carried out by a human being. Fast
forward to the 21st century, the rapid
development in artificial intelligence
allows generative AI tools to be used
to create entirely new designs by
themselves. This raises the question,
could an AI system be named as an
inventor for a patent application?
In 2008, Dr Stephen Thaler began
experimentation on a new type
of artificial neural network called
DABUS – Device for the Autonomous
Bootstrapping of Unified Sentience.

By 2018, DABUS reportedly
conceived two inventions. Dr Thaler
filed patent applications for the
inventions naming DABUS as the sole
inventor, and the Artificial Inventor
Project was born. Patent applications
were filed in the major jurisdictions
around the world including the UK,
Europe, US and Australia causing the
respective patent offices to form a
view about who can be an inventor.

One of the inventions described
in the patent applications,
(including Australian application no.

2019363177), is directed to a food or
beverage container with a wall profile
having pits and bulges as shown in
some of the specification drawings
reproduced left. The unique profile
enables multiple containers to be
releasably coupled together without
separate fasteners. The increased
surface area is also believed to
facilitate heat transfer and grip.

In February 2021, IP Australia issued
its decision in Stephen L. Thaler
[2021] APO 5 addressing the
inventorship question. It determined
that a patent can only be granted
to a person. An AI machine is not
a person, and it is not possible
for a person to derive title to an
invention devised by a machine from
the machine as the law does not
presently recognise the capacity of
an artificial intelligence machine to
assign property.

The Delegate also considered that
since Dr Thaler asserted that he did
not devise the invention, but merely
acquired knowledge of the invention
from the AI machine, Dr Thaler
would not be the inventor.

Finally, the Delegate concluded
that the law as it currently stands in
Australia is inconsistent with an AI
Inspire March 2021
DABUS challenges current
legal principles on inventorship.




machine being treated as an inventor.

In this case, since it was not possible
to identify a person who can be
granted a patent, the application failed
to meet filing formalities. As this
deficiency was not capable of being
corrected, the application lapsed.

Accordingly, it appears that a patent
application naming an AI machine
as an inventor cannot be validly filed
in Australia, principally because
there is currently no mechanism for
a nominated person to derive title
to the invention.

While specific legislation regarding
inventorship varies in different
jurisdictions, related overseas
applications naming DABUS
as the inventor have received
similar outcomes.

In January 2020, the European
Patent Office refused two patent
applications on the grounds that the
applications listed the AI machine
DABUS as the inventor and not a
‘natural person’, and that designating
a machine inventor with a name
‘does not satisfy the requirements
of the European Patent Convention.’
Similarly, in July 2020, the UK High
Court upheld a 2019 UK Intellectual
Property Office decision stating that
an inventor can only be a ‘natural
person’, and not a machine. The UK
High Court and EPO each found that
an AI machine could hold no rights,
and could not transfer any rights to
an applicant as successor in title.

In February 2020, the US Patent
and Trademarks Office issued a
decision denying a petition to vacate
a Notice to File Missing Parts.

The Notice indicated that the
application did not ‘identify each
inventor by his or her legal name’.

The USPTO rejected the notion that
an inventor could be construed
to cover machines, referring to
dictionary definitions and case law
indicating that an inventor must be a
natural person, and that the inventor
who executes an oath or declaration
must be a ‘person.’
Dr Thaler has appealed the decisions
in the UK, EPO, and the Federal
Court of Australia.

So, what do an AI machine like
DABUS and a monkey have in
common? In the monkey selfie
copyright dispute, it was found that
the monkey was unable to hold
copyright in a selfie picture because
it was a non-human creator. Just like
that monkey, DABUS is unable to be
named as an inventor because it is
not a natural person.

It seems that without legislative
reform, it will be difficult to obtain
patent protection for an invention
devised solely by an AI machine.

It has been argued that this is not
necessarily a bad outcome, as
allowing patent applications to be
filed for inventions generated by
AI machines may stifle rather than
promote innovation. In any event,
the question of inventorship may
not be the only hurdle to protection
for AI devised inventions. Of course,
there is also the question of whether
an invention devised by an AI
machine during normal operation –
e.g. executing an iterative process
to determine optimum design
features of a product would be
obvious. Perhaps this will be the
next question.

Inspire March 2021
5 Helen McFadzean | Senior Associate
BE(Hons) Mechatronics MIP FIPTA
helen.mcfadzean@pof.com.au