DABUS encounters another obstacle in US Appeals Court

A United States Federal Circuit Appeals Court has reaffirmed that an artificial intelligence system is not a legally recognised inventor under United States patent law. 

Despite Dr Stephen Thaler, the creator of the Device for the Autonomous Bootstrapping of Unified Sentience (DABUS) which was alleged to be an inventor for the purposes of a patent, asserting that DABUS is “natural and sentient”, in Thaler v. Vidal, U.S. Court of Appeals for the Federal Circuit, No. 21-2347, Circuit Judge Leonard Stark, joined by Chief Judge Moore and Judge Taranto, ruled in favour of the USPTO (United States Patent and Trademark Office). In no uncertain terms, Judge Stark, adopting a plain text reading of the Patent Act, dismissed the assertion that DABUS could be an inventor, ruling that “there is no ambiguity: the Patent Act requires that inventors must be natural persons; that is, human beings.”

This marks yet another setback for Stephen Thaler whose case has been dismissed in Europe, the UK, New Zealand and Australia (which my colleague Caleb Maher wrote about here). Dr Thaler has applied to the High Court of Australia for special leave to appeal but no decision on whether special leave will be granted has issued.

As the Full Court pointed out in Commissioner of Patents v Thaler [2022] FCAFC 62, Dr Thaler’s intention is not solely to have DABUS recognised as an inventor for this particular invention but rather to provoke conversation and engagement with the issue about “who” or “what” can and should be an inventor in relation to an application for a patent. The Courts (bar Justice Beach in Thaler v Commissioner of Patents [2021] FCA 879) and the various administrative bodies, to date, have shown no appetite to construe the definitions of an inventor in the various patent legislations to be expansive or evolving over time, unlike other aspects of patent law, such as the question of what is patentable subject matter or what defines a manner of manufacture. It will be interesting to see whether any government feels the need to take this up as a “matter of urgency” as suggested by the Full Federal Court or whether they are content to let sleeping (or at least drowsy) dogs lie for fear of significantly upsetting the current state of patent law. As has been pointed out by numerous parties, allowing an artificially intelligent system to be recognised as an inventor raises a number of questions regarding transfer of ownership and who is entitled to be the assignee, as well as possible implications for the standard of inventive step and these will need to be carefully considered before the government acts.

Dr Thaler’s application for special leave to appeal should be heard before the end of the year.

Jeremy Moller
written by Jeremy Moller, Principal