December 01, 2021
Can non-living artificial intelligence system be called an inventor under patents law? 
The UK Court of Appeal was presented with this dilemma when Mr. Stephen Thaler, the 
owner of the AI namely ‘DABUS’ system, claimed that it should be recognized as an 
inventor. Mr. Thaler had to move to the Court against the UK's Intellectual Property 
Office’s (UKIPO) decision that had denied his claim.
It is noteworthy that Mr. Thaler has had mixed luck with different patent offices. While 
Australian and South African patent offices gave favorable decisions, the USPTO 
rejected his application, denying the inventor status to the AI.
Background of the case
In 2018, Mr. Thaler filed two patent applications, naming 'DABUS' as inventor and 
himself as the owner of the invention. He argued that since he created DABUS and 
owns it, therefore, he owns the invention. While DABUS is the one who, being an AI 
system, created the invention, should be named as the inventor.
The UKIPO asked Mr. Thaler to list a ‘real person’ as the inventor to enable the office to 
process his application. Mr. Thaler did not comply with the office’s suggestions leading 
to the refusal of the patent application.
This underlying assumption in the case has resulted in the conundrum of whether an AI 
can be considered as an Inventor, let alone whether or not it has the rights to assign it 
to an applicant. The UKIPO's decision was negative, based on their interpretation of the 
patents law.
Where does USPTO and EPO stand?
During the formal examination phase, both the US Patent and Trademark Office
(USPTO) and the European Patent Office (EPO) rejected these applications. They had 
three reasons for rejecting the applications:
1. Patent laws only allow for human inventors, not AI, as evidenced by the use of 
pronouns like "him" and "her" in their text. 
2. Ideas for the purposes of patents require the element of “mental conception,” 
which only a human mind is capable of.
3. Inventorship entails rights that AI is not legally entitled to.

Australia, the first decision by a court to allow a patent to proceed in the name of 
a robot inventor
The Australian Court described how artificial intelligence (AI) is already being used in 
one field of scientific inquiry: pharmaceutical research. This implies that no narrow view 
of the concept of ‘inventor' should be taken, as ‘doing so would inhibit innovation not 
only in the field of computer science but in all other scientific fields that may benefit from 
the output of an artificial intelligence system'. The Australian Court supported its 
decision with the following arguments:
a) Non-humans are not excluded from the ordinary definition of the inventor:
The term "inventor" is not defined in the Australian Patents Act. The Court noted that no 
specific provision in the Act expressly refutes the proposition that an AI system can be 
an inventor, nor is there any feature of patents law, unlike copyright law, involving a 
requisite for a human author, that would drive the construction of the Act that 
excludes non-human inventors.
b) AI as inventors continues to advance the goals of the Patents Act:
Not recognizing the reality of AI inventorship may result in inefficiency, if not logical 
difficulties, including the possibility that individuals who are not actually responsible for 
an invention may be recognized and rewarded without having contributed significantly to 
the inventive process, which would be the polar opposite of the Act's objectives.
c) The use of AI as inventors is not inconsistent with the Patents Act:
The Court agreed that, in principle, Dr. Thaler is entitled to be granted a patent in 
relation to an invention made by DABUS under section 15(1)(c) “derives title to the 
invention from the inventor or a person,” and possibly section 15(1)(b) “on the grant of a 
patent for the invention, be entitled to have the patent assigned to the person.” It was 
determined that the language of section 15(1) (c) recognizes that the rights of a person 
who derives title to an invention from an inventor extend beyond assignments. 
In terms of possession, prior to applying for patent, proprietary rights may exist in an 
invention, and an invention is capable of being possessed and ownership may result 
from possession. Dr. Thaler, as the owner and controller of DABUS, would be the owner 
of any DABUS inventions that came into his possession. 
Furthermore, the title can be derived from the inventor, despite the fact that it vests in 
someone other than the inventor from the start. There is no requirement that the 
inventor has ever owned the invention.

UK Court of Appeal’s approach
The UK Court looked at this issue through the lens of the statutory scheme of the 
Patents Act of 1977 and opined that a patent can only be granted to a person, whatever 
be the meaning of the term "inventor." The Court provided the following reasons for its 
opinion:
• The Patents Act of 1977 states unequivocally that the holder of a patent must be 
a ‘person’.
• Only a ‘person’ can own property; an invention, a patent application etc.
Court of Appeal sayth
By a two-to-one majority, the UK Court decided that:
"Only a person can have rights. A machine cannot, a patent is a statutory right and it 
can only be granted to a person. It is clear that, upon a systematic interpretation of the 
1977 Act, only a person can be an 'inventor'."
Whether Dr. Thaler, as the applicant, falls into one of the three classes defined in 
Section 7(2) as Class (a), Class (b), or Class (c)?
According to the Court, Dr. Thaler's argument was hopeless and failed due to the 
following reasons:
• “His issue is that there is nothing to be transferred to him and no one capable of 
transferring it. This difficulty was emphasized by Dr. Thaler's inability to identify 
any mechanism or transaction (whether within Section 7(2)(b) or (c) or otherwise) 
through which rights could pass to him.” 
• “Dr. Thaler renounced the title of inventor. He claims DABUS is the creator while 
admitting that DABUS is not a person. Dr. Thaler is a person who can be the 
transferee of a property right. His best option was to rely on his ownership and 
control of DABUS, which the Court was willing to accept for the purposes of this 
appeal.”
The Court ruled that simply because DABUS invented something and Dr. Thaler owns 
DABUS does not entitle Dr. Thaler to a patent.

ndian Patents law perspective
In India, currently there is no guideline that can be applied to AI-related patent 
applications. AI technology is covered by the Computer Related Inventions (CRI) 
guidelines. 
The CRI guidelines prohibit the patenting of a computer program or algorithms per se. It 
is recommended that when claiming protection; define the method of device that uses 
AI.
In terms of inventorship, the Indian Patents law may be interpreted in the following 
manner:
1. If the ‘true and first inventor' is not the applicant/patentee, does this non-natural, 
non-legal AI-being have the rights or capacity to hold any property, such as 
intellectual property rights, and thus have the right to assign it to any other 
person, i.e. applicant? 
For the Indian Patent Office (IPO), the answer appears to be "No" that will side 
with its USA and European counterparts.
2. When the applicant/patentee is the ‘true and first inventor,' it must be a ‘person' 
as per section 2(1)(p), if the patent is granted. The definition of a ‘person' says 
that it includes the Government as per section 2(1)(s), however does not 
sufficiently define what or who a ‘person' is. In that case, we take reference of 
following Indian laws that give definition of a ‘person’ as per the accepted rules of 
legal interpretation:
• The Constitution of India recognizes two types of persons: natural persons (a 
real and living person) and legal persons (Corporations, Companies, 
Universities, President, Societies, Municipalities, Gram panchayats etc).
• Individual, Hindu Undivided Families [HUFs], Association of Persons [AOPs], 
Body of Individuals [BOIs], Firms, LLPs, Companies, Local Authority, and any 
artificial juridical person are all included in Section 2(31) of Income Tax for the 
purpose of charging Income Tax.
Nowhere is the term "person" defined as a non-living AI being. To be fair, it was beyond 
imagination that a question of ‘personhood’ might arise for a non-living AI, while the 
Constitution was being debated and framed. 
Nonetheless, going by the literal interpretation of the law, Indian laws will lean towards 
denying the proposition of AI being an inventor or an artificial person. Furthermore, 
Indian laws follow English laws, and Indian courts, if such a situation arises before 
them; will most likely interpret the laws against AI being the inventor, just as UKIPO and 
UK courts have done.

What does this mean for the life science industry?
AI/ML is changing the landscape of life science industry. AI is currently used to predict 
biological targets of prospective drug molecules, identify drug design candidates, 
decode viral genetic material in the context of pharmaceutical and vaccine 
development, determine three-dimensional structures of proteins, including their folding 
form, and many other potential therapeutic applications. AI/ML is being used in every 
step of pharmaceuticals, biopharmaceuticals, medicines, medical technologies, and 
agriculture, hence would be closely affected by the legal development in this regard. 
However, with the ever-changing world, and enough AI inventions around, it is very 
much possible that the laws will change, creating provisions to accommodate AI as 
artificial persons and thereby inventors. Furthermore, the issue of ownership will still 
remain a critical issue, even after non-human inventorship is widely accepted. Global 
legislative changes would be required in order to broaden the limits of patent 
inventorship and ownership. 
It is uncertain when or if at all this will happen, but the decisions from Australia and 
South Africa have certainly raised the profile of the debate over inventorship and 
ownership of AI-conceived inventions across the globe.
Authors:
Tabitha Reji, Student@Symbiosis Law School, Pune, and Intern @ IKP-PRIME, IKP 
Knowledge Park
Manish Kumar, Manager – IP & Licensing, IKP-PRIME, IKP Knowledge Park
References
1. https://www.bbc.com/news/technology-58668534
2.https://www.scconline.com/blog/post/2021/09/09/ai-machines-cannot-be-inventors/.
3.https://www.thehindu.com/sci-tech/technology/in-a-world-first-south-africa-grants-patent-to-an-artificial-intelligencesystem/article35817497.ece
4.https://www.allens.com.au/insights-news/insights/2021/07/world-first-australia-says-yes-to-ai-inventors/ .
5.https://www.mondaq.com/unitedstates/patent/1101942/artificial-intelligence-as-the-inventor-of-life-sciences-patents