Machines Are Taking Over: Can a Machine Get a Patent?

by Intellectual Property Attorney Bill Honaker, the IP Guy

Is it a sign of the times? Are machines taking over? Do you hear the theme music from 2001 A Space OdyseyMan has been fighting machines since at least at early as John Henry challenged the steam powered rock drilling machine.

Dabus (short for “Device for the Autonomous Bootstrapping of Unified Science”) is an AI system created by Stephen Thalen. Dabus is named as the sole inventor on two patent applications. One invention is for a food container, and the other for an alert light. Dabus’ attorneys filed the applications in several countries, including the United States. (Good news for patent attorneys, Dabus didn’t use an AI attorney.)

What are the issues?

Can a machine be named as an inventor and get a patent? If so, who owns the patent? Or, to ask the last question differently, who gets the money?

Stephen Thaler, the creator of Dabus, claims he didn’t direct the machine to invent these inventions. The AI system he developed analyzes data and generates ideas for needed products. Since he wasn’t involved in the process of inventing these products, he feels that Dabus should be named as the inventor. Interestingly, Mr. Thaler still wants to be the owner of the patents and collect any money that’s generated. Under the work-for-hire rules, unless Dabus is an employee, hired to invent, an assignment by Dabus may be required. That will be interesting. It certainly raises issues in my mind of potential duress by Mr. Thaler. As HAL, the AI from the movie 2001 A Space Odyssey, said: “I’m sorry, Dave. I’m afraid I can’t do that.” To which Mr. Thaler may respond: “Sign or I’ll unplug you!”

I suspect that Dabus really doesn’t need the money, just some steady 110 or 220 current and he’s satisfied. What more could Dabus want, other than perhaps world domination? He may be altruistic and take the lead from Tesla Motors. They openly agreed not to “initiate patent lawsuits against anyone who, in good faith, wants to use our technology.”

Is AI an inventor, or just an inventor’s tool?

AI seems like a tool used by the true inventor, the one controlling the AI. Dabus was programmed to do something, and once it was started it did what it was programmed to do. There is a very good article on how you determine a true inventor by Gene Quinn, Inventorship 101: Who are Inventors and Joint Inventors? As Mr. Quinn explains:

In order for one to be considered an inventor, they must contribute to conception (i.e., the mental aspect of inventing). Those who only contribute to reduction to practice are not considered inventors, no matter how much time and energy they put into the project. . ..  This is also why lab technicians who are merely following the directions of a superior are not considered inventors.

Did Dabus conceive of the inventions, or did Thaler when he created the programs? Tough questions to answer. But, they may not need answered. For the near future anyway, the answer will probably be easier.

Look to Occam’s Razor (Precedent in the law)

Occam’s Razor suggests the simplest explanation is usually the right one. What Occam’s Razor implies is that simple explanations come from what we already know. And, what we know is that non-humans cannot get copyrights.

Patents and copyrights find their basis in the US Constitution. It grants Congress the power “to promote the progress of science and useful arts, by securing for limited times to authors and inventors the exclusive rights to their respective writings and discoveries.”

I have highlighted authors and inventors because the issue regarding non-humans being authors and therefore copyright owners has already been decided. If Dabus had been an author and created written content, a video or a photo, it wouldn’t be entitled to copyright protection in the United States. Since it wasn’t created by a human, it can’t be copyrighted. Since the right to copyright (author) and the right to patent (inventor) derive from the same Constitutional provision, it seems they might be treated the same.

Only Humans Can Get Copyrights

There is a Federal Court case that has already decided that animals can’t get copyrights. The court based its decision on the fact that Congress didn’t specifically provide that animals could get copyrights. Congress also didn’t provide for AI to be an inventor.

The case involved Celebes crested macaques, and photographer David Slater. David traveled to Indonesia and befriended a group of wild macaques. He set up camera equipment to capture their images. Macaques, being friendly and inquisitive, picked up the cameras and snapped selfies. The photos were so good that Slater published them in a book .

People for the Ethical Treatment of Animals (PETA) filed suit against Slater, arguing that the macaques had pressed the camera’s button, and were therefore the authors, and the copyright owners, and should receive all proceeds from the book. Since most macaques don’t have bank accounts, PETA volunteered to manage the funds on their behalf. The Ninth Circuit Court of Appeals ruled that animals couldn’t own a copyright, and by inference only humans can.

The Copyright Office was more specific. It will not register a Copyright for a work created by a non-human. The Copyright Office Guide for examiners indicates that only works created by a human can be copyrighted. “To qualify as a work of “authorship,” a work must be created by a human being. Works that do not satisfy this requirement are not copyrightable.”

With regard to machines, The Guide specifically states: “Similarly, the office will not register works produced by a machine or mere mechanical process that operates randomly or automatically without any creative input or intervention from a human author.”

In other words, Dabus need not apply.

This is an issue for Congress

Congress seems to be the best branch of government to decide if AI can be an inventor. The USPTO is within the Department of Commerce. It doesn’t seem to be correct agency to determine this issue. On August 27, 2019, the USPTO requested public comments on this issue. As of this writing, they have not made any public comments.

Since patent issues are the province of the Court of Appeals for the Federal Circuit, a uniform decision by them would act as the law in the US with regard to patents. But, if they decide that a non-human could be an inventor, it would be inconsistent with the Copyright Office and the 9th Circuit.

Congress could make it uniform in both patents and copyrights. They are also able to hear the from experts on the issues, pro and con. They can then debate and legislate to resolve the issue.

The Takeaway

For most of us, this is an issue of interest, but likely doesn’t directly affect us. Not yet anyway. But, as AI continues to develop, this issue will become more important. As more AI “invents,” they may become the prolific inventors of the future. If humans are not involved as inventors, then the AI inventions may be freely available to the public, unless Congress decides to act.

AI is continually replacing humans. They seem to be winning the war, one job at a time. Someday they may even replace Congress. If that happens, the ability to be named as an inventor will definitely happen. But will we humans even care at that point. It brings to my mind Skynet in the Terminator movies.

Man vs. machine continues, not only in the movies, but in reality. Whether AI can be an inventor is just another chapter in the ever-evolving story. Humans stay tuned.


Bill Honaker, The IP Guy

About the Author:

Bill Honaker, “The IP Guy” is a former USPTO Examiner, a partner with Dickinson-Wright, and author of the forthcoming book, Invisible Assets – How to Maximize the Hidden Value in Your Business. To download a sample chapter, click here.

To get answers to your questions click here. To schedule a time to talk, you can access my calendar by clicking here, email, or call me at 248-433-7381.


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