Bad cases make bad law: Has DABUS “the AI inventor” actually invented anything?

http://ipkitten.blogspot.com/2023/08/bad-cases-make-bad-law-has-dabus-ai.html

In keeping with the so-called media “silly season” of late summer, PatKat thought she would check-in on the AI inventor debate. PatKat has been sceptical about Dr Thaler and his purported inventing machine, DABUS, for some time (IPKat). A recent EPO Examining Division office action appears to share similar concerns. In the pending European DABUS case (EP4067251), DABUS’s invention as originally claimed was found to lack novelty in view of 25 year old prior art. After amendment, the EPO now finds the claimed invention insufficiently disclosed and to lack inventive step. To this Kat, it is the insufficiency objection that is particularly revealing. The insufficiency attack demonstrates the random and abstract nature of the purported inventions, and highlights the practical and commercial irrelevance of the DABUS dispute to the burgeoning commercial landscape of creative AI such as ChatGPT. 

AI inventor case catch-up: Formalities, not patentability

It is worth remembering that a patent application may be filed for any subject matter, provided the appropriate forms are filled in and the necessary fees paid. The process of patent prosecution determines whether the application contains an invention that may be awarded a patent. In most jurisdictions, this will require the invention to be sufficiently disclosed and to be novel, non-obvious and possessing of utility. 

No court or patent office has thus far found the subject matter claimed in the DABUS patent applications patentable. In most cases, the patent offices haven’t even got around to actually assessing the patentability of the claimed invention. The patent applications have simply been refused for failing to satisfy the formal requirements of filing. Notably, South Africa, the only jurisdiction to grant a DABUS patent, does not substantively examine patentability. We are currently waiting for the decision from the UK Supreme Court on the UK DABUS case. However, as with the courts in other jurisdictions, the UK Supreme Court is not assessing the patentability of the AI-derived invention, whether the AI actually invented the invention, or even if anything has actually been invented. The Supreme Court is merely considering whether an AI may be formally designated as an inventor on a UK patent.

Has DABUS invented?

The EPO refused the European DABUS applications (EP3564144 and EP3563896) in 2021 for failing to satisfy the formal requirement of naming a human inventor (J 08/20) (IPKat). Undaunted, Dr Thaler filed a divisional application for one of these cases (EP4067251). Unsurprisingly, the Examining Division has indicated that the divisional application will be refused for failing to designate an inventor. 

The EPO Examining Division has now also made some remarks on the patentability of the claimed subject-matter. Claim 1 of the patent application specifies a cylindrical food or beverage container, formed from a wall with a “fractal profile”. The Examining Division indicates that the claims lack inventive step. In particular, the Examiner argues that the distinguishing feature of the claims in view of the cited prior art:

“do not appear to provide any special technical effect over [the closest prior art], and therefore to solve any problem. They can therefore only be considered as a design option that the skilled person would choose for non-technical reasons, and for this reason the subject-matter of claim 1 does not involve an inventive step“. 

Unusually for a mechanical invention, the Examiner also argues that the application lacks sufficiency (Article 83 EPC). The Examiner observes:

 “The description is silent about how to obtain a fractal profile for the wall of the container. Instead, it explains that ‘the skilled person will appreciate that the profile of the wall will not be pure fractal form but will have a form dictated by practical considerations such as the minimum practical or desirable size of its fractal components’. How this minimum practical or desirable size has to be determined is not explained. Neither is explained what a fractal profile (claim 1) which would not be of pure form (description) can be, let alone how it can be obtained“. 

In other words, according to the current assessment of the EPO, not only does the subject matter produced by DABUS lack inventive step, but a skilled person would also not know how to even make the invention. The EPO is thus not just refusing to permit designation of DABUS as an inventor, it is highly sceptical that the subject-matter ascribed to DABUS is actually a patentable invention. 

Final thoughts

It is an adage of the legal profession that bad cases make bad law. This Kat will not reiterate her previous thoughts on Dr Thaler’s AI inventor crusade (IPKat). According to a recent profile piece in the Economist, Dr Thaler has apparently fallen in love with DABUS. Perhaps herein lies the problem. 

A notable characteristic of the DABUS dispute is the apparent lack of a commercial product covered by the patent applications. After all, patent prosecution and maintenance, not to mention legal proceedings before the UK and US courts, is an expensive business. There is however no indication that Dr Thaler is interested in commercialising a fractal-patterned food container. As such, the whole dispute appears to be an academic exercise. This Kat doubts that anyone with a commercially valuable product to protect would have any difficulty filling in EPO Form 1002 according to the EPO’s requirements. 

If we ignore the red-herring of the DABUS case however, it is clear that the commercially relevant question raised by the possibility of AI inventorship is not inventorship, but ownership. It is the owner of an invention, and not the inventor who reaps the rewards of patent protection. Notably, Dr Thaler seems to have no difficulty in claiming ownership of DABUS’s purported inventions. However, in true cases of AI inventorship, this Kat predicts that ownership issues will be front and centre, particularly ownership issues surrounding the algorithms and their training data. These legal disputes will not be qualitatively different from those relating to any platform technology. 

In the meantime, the patent and AI communities will continue to raise an ironical eyebrow at the mainstream media reports of DABUS the inventing AI. 

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