Intellectual Property Rights: The Strange Cases of the Macaque and the Machine


Many of you will recall the interesting story behind this fantastic picture, the famous monkey selfie. It’s a great example of how IP laws can result in a controversial and somewhat perverse outcome.

Because the macaque monkey actually took the photo, the human owner of the camera was (who gave the monkey access to the camera) could not claim copyright. as it cannot subsist in something created by a non-human. Conventional wisdom says that copyright laws are intended to incentivise human creative endeavour. So, no copyright subsists in this photo! This legal result caused a lot of angst for the photographer who lent the camera to the monkey! [Monkey Selfie Copyright Dispute]

That all transpired back in 2014, and in 2020, we have a comparable situation, this time not in copyright, but in the realm of patent law.

What Is the Meaning of a Patent?

In addition to novelty and non-obviousness, a central tenet of patent laws is that we must identify the inventor of the claimed invention. The limited monopoly which is granted to a patentee is intended to reward and incentivise the inventor’s creative effort.

Who’s Entitled to a Patent Registration?

But consider: what if the inventor is not a human? In case you’re wondering, that grinning photogenic monkey has not evolved from taking selfies to inventing a cure for cancer.  But what if the ape wrote some code? Well, clearly that code would not qualify for copyright protection, based on the selfie precedent discussed above.

Forget the monkey and consider instead the advent of machine learning, which has enabled a machine, (another non-human), possessing sufficient artificial intelligence’ to choose a problem and then find an optimal solution to that problem. That sort of reasoning was previously the realm of humans, albeit quite often with the assistance of programmed computers.

But now DABUS has been named as the inventor on two international patent applications filed in the US and in UK (and which may yet consider in the context of the patent laws of up to 150 other countries).  “DABUS who?”, you ask. "Device for the Autonomous Bootstrapping of Unified Sentience". DABUS. Not a monkey, and definitely not a human but rather a machine that has created an invention. This non-human machine is not making a claim to copyright protection (akin the monkey situation). Instead, the non-human machine, DABUS, is making a claim to patent protection.

Well, of course.

There seems to be little doubt (so far) that the two quite different inventions described in the DABUS patent applications (Application1, Application2) satisfy the essential criteria of novelty and inventive step (although they have not yet been examined). What is not clear is whether DABUS is entitled to be named as the inventor on the patent, because patent laws tend only to imply that an inventor must be human.

What Do Patent Laws Say?

In Australia the Patents Act 1990 does not define an Inventor and nowhere states explicitly that the inventor must be human. Rather, section 15 states that only an eligible person may be granted a patent. Eligibility to receive a patent is based on numerous criteria but the point is, it always assumes the inventor is a person.

Section 15 mentions ‘person’ or ‘people’ no less than five times, clearly identifying a person as the patentee. So, unless the law is amended, it is very arguable that inventions created by AI will not be eligible for the grant of a patent in Australia... because the inventor is not a person.

The position is similarly ambiguous in Europe and US, where DABUS’s inventions have been the subject of patent applications.

In the UK, section 7 of the Patents Act 1977 also uses the word person, in the context of inventorship, thus assuming the inventors is a person. Although there is no explicit statement that the inventor must be a person, the UK patents office, relying on principles of statutory interpretation, has decided that an inventor must be a person. That decision is theirs to make until a court decides differently, or new legislation is passed.

In the US. the patent legislation refers to the inventor as an individual. (35 USC Section 100(f)). The USPTO has not yet made a decision on these applications but, like other patent offices, is actively seeking and considering public discussion on the topic.

The named applicant on the DABUS applications is Stephen Thaler, a celebrated AI futurist, and the inventor of DABUS. (Thaler was awarded US Patent 10,423,875 in September 2019 for the invention which enables DABUS) and the founder of a company called Imagination Engines, Inc.

There are many published articles about the societal and commercial implications of upholding a patent system. Given the high probability that AI will be responsible for a lot more inventing in the future, it remains to be seen how this will play out in society.

If you want to know more, read this article published by WIPO in December 2019.

If you need assistance with an Intellectual property issue in Australia or overseas, contact us for a free consultation. We're always here to help!