DEMYSTIFYING THE CASE OF

‘DABUS’: THE WORLD’S FIRST AI

TO BE AWARDED A PATENT.
INTRODUCTION TO DABUS
• Created by Dr. Stephen Thaler, president and chief executive of US- based
AI firm Imagination Engines, DABUS stands for the following:
D- Device
A- Autonomous
B- Bootstrapping
U- Unified
S- Sentience.
WHAT IS DABUS CAPABLE OF?
• Simulates human brainstorming and creates new inventions.

• It is a particular type of AI, referred to as ‘creativity machines’ as it is capable of independent

and complex functioning.

• Combines simple concepts into more complex ones that in turn launch a series of memories.

• Can express anticipated consequences of ideas.

• Capable of machine sentience i.e emulating features of human cognition that supplies a subjective
feel for whatever the brain is perceiving or imagining.
 CONTENTIONS OF DR. THALER: DABUS’S OWNER
• DABUS uses its complex and varied interconnected neural networks to create its own ‘ideas’.
DABUS using this feature was able to create 2 different inventions:

INVENTION 1: Plastic Food Container that uses fractal geometry to change shape.

INVENTION 2: Flashing Light Device designed to attract attention during emergencies.

• No human being was in any way involved or responsible for these inventions i.e DABUS is
the sole inventor and Dr. Thaler as DABUS’s owner meant to protect them. So, he filed
patent applications in multiple jurisdictions such as UK, USA, South Africa and Australia.
 DABUS IN UK
• Case Name: Thaler V Comptroller of General Patents, Designs and Trademarks. Denied
by lower courts, the case finally reached UK Supreme Court.
• On 20 December 2023, The UK Supreme Court held that under the Patents Act, 1977, a
patent may not name an AI invention as an inventor. The judges adhered to the rulings of
lower courts as well as the UK Intellectual Property Office- UKIPO, that an invention is
patentable only if it names a ‘natural person’.
• “Definition of Inventor in the act : A person who devises a new and non-obvious product
or process.”
• The SC held that an autonomous AI system cannot be named as an inventor under the
current provisions of the Act. Further, the ownership of an AI system does not confer a right
for the owner to apply for or obtain a patent relating to inventions generated by an AI
system.
 DABUS IN US
• The United States Patent and Trademark Office – USTPO also rejected
DABUS reasoning that a plain reading of statutory provisions of the United
States Code (U.S.C.), discloses the inventors only as ‘natural persons.
• The USTPO referred to USC Sections 35 and 100(f-g) where terms such as
‘individual’ and ‘whoever’ are used in the context of inventorship, implying that
inventors have to be humans.
• The USTPO cited University of Utah V. Max Planck Gesellschaft, wherein the
court refused to list a company or a state as an inventor as the USTPO
concluded that an AI system cannot be listed as an inventor and that the
statutes limit the inventors to individuals.
 DABUS IN AUSTRALIA
• Thaler filed patent applications on DABUS’s food container in various
jurisdictions, including Australia. However, the Australian Deputy
Commissioner of Patents rejected the patent application, whereupon Thaler
sought legal redress . The Deputy Commissioner argued that because the
Australian Patents Act 83 of 1990 does not define the term ‘inventor’:
(1) an AI system does not qualify as an inventor based on the ordinary
meaning of the word, which requires an inventor to be a human; and
(2) it would be impossible to identify a person who would thereafter be
granted a patent.
• In a groundbreaking decision in July 2021 , the Australian Federal Court per Justice
Beach set aside the Deputy Commissioner’s decision and referred the patent
application back to the Deputy Commissioner for reconsideration. The court found
that excluding AI systems from the meaning of ‘inventor’ would lead to an
unacceptable situation whereby any invention by an AI system would be
unpatentable which would run contrary to the object of the Australian Patents Act –
which is to promote technological innovation.
• The court held that ‘inventor’ need not be interpreted narrowly, but its meaning
should rather evolve to meet the objects of the Australian Patents Act; and that
including AI systems in the meaning of ‘inventor’ is a recognition of the reality that AI
systems are in fact inventing.
• The court found that the Deputy Commissioner confused the concepts of ownership
and inventorship.
• The inventor is not necessarily the owner, and while AI systems can be the inventor, it
cannot be the owner. This is because only a person (in the legal sense) is capable of
ownership, but the same is not applicable to inventorship.
• Using established principles of property law, the court held that due to Thaler’s
ownership and control of DABUS, he would automatically be entitled to any invention
by DABUS. In a historic and well-drafted judgement, the court decided that:
• (1) AI systems such as DABUS are not precluded from inventorship status;
• (2) the objective of patent law supports the notion that AI systems can be inventors;
and
• (3) patent ownership vests in the owner of the AI inventor.
 DABUS IN SOUTH AFRICA
• The South African companies and Intellectual Property Commission (CIPC),
made history by being the first patent office in the world to grant an artificial
intelligence system, an inventor status.
• It is pertinent to note that the country does not have a substantive patent
examination system. It should also be noted that in South Africa the patent
office only checks for basic formal requirements.
• This essentially means that no substantive decision regarding the merit of the
invention, or the applicability of an AI system as an inventor, was technically
made within the scope of this process. The patent office didn't formally
examine the legitimacy of the AI as an inventor but primarily concerned
itself with the completeness and correctness of the application forms.
• Unlike the US patent law that expressly defines an “inventor” to mean “the
individual or, if a joint invention, the individuals collectively who invented or
discovered the subject matter of the invention”, South Africa’s patent laws
provides no literal definition of an “inventor”. South African patent law refers
to the inventor in the masculine form as a person.
• The court cautioned that no narrow view should be taken to the concept of
“inventor.” To do so would inhibit innovation in all scientific fields that may
benefit from the output of an AI system. The court further opined that the
concept of “inventor” should be flexible and capable of evolution.
• The court agreed to granting DABUS a patent, finding that the statutes do
not expressly exclude an inventor from being an AI system.
 CHALLENGES OF GRANTING AI INVENTORSHIP
• Legal and Regulatory Frameworks: Existing patent laws and regulations
were primarily designed with human inventors in mind. Recognizing AI systems
as inventors would require significant legal and regulatory adjustments to
accommodate this new paradigm.
• Definition of Inventorship: The concept of inventorship traditionally involves
human creativity, ingenuity, and intentionality in the invention process.
Determining whether AI systems meet these criteria poses philosophical and
legal challenges.
• Ownership and Control: Recognizing AI as inventors raises issues regarding
ownership and control of the intellectual property rights associated with AI-
generated inventions. Determining who owns the rights to AI-generated
patents and how those rights are managed can be complex and contentious.
 SUGGESTIONS FOR FUTURE OF AI INVENTORSHIP
• Granting AI inventorship status would require careful consideration and likely
necessitate significant legal, ethical, and policy changes. Here are some suggestions
to navigate this complex issue:

ØAmendment of Patent Laws and Regulations

ØCreating AI Inventorship Guidelines
ØDefining Inventorship Criteria
ØEnsuring Accountability and Responsibility
ØMonitoring and Adapting