Summary
In the case of Patent Application No. 202017019068, Stephen L. Thaler filed a patent application in India naming DABUS, an artificial intelligence entity, as the inventor. The Patent Office dealt with the application in examination proceedings and also in pre grant opposition proceedings arising from the same application. In the refusal proceedings, it held that DABUS cannot be recognised as the true and first inventor under the Patents Act, 1970, and that the requirements relating to declaration of inventorship and proof of right were not met. In the pre grant opposition proceedings, it held that an objection to inventorship could not be sustained under Section 25(1)(f), because that provision concerns patentability of the claimed subject matter, and not entitlement or procedural compliance.
Background
AI Inventorship Dispute
Stephen L. Thaler filed Indian Patent Application No. 202017019068 for a food container and named DABUS, described as Device for the Autonomous Bootstrapping of Unified Sentience, as the inventor. During examination, the Patent Office raised an objection that the Patents Act recognises only a natural person as inventor, and also questioned compliance with the requirements relating to declaration of inventorship and proof of right. A pre grant representation was also filed against the same application. The Patent Office therefore addressed the DABUS inventorship issue in the examination proceedings and also considered whether the same issue could be raised in the pre grant opposition proceedings.
Questions Before the Court
- Whether DABUS, an artificial intelligence system, can be recognised as the true and first inventor under the Patents Act, 1970.
- Whether the applicant complied with Sections 6, 7 and 10 relating to declaration of inventorship and proof of right after naming DABUS as inventor.
- Whether ownership of DABUS, its source code, or the machine on which it operated could establish proof of right.
- Whether reliance on PCT Rule 4.17(ii) could satisfy the statutory requirements under Indian law.
- Whether an objection to AI inventorship can be raised in a pre grant opposition under Section 25(1)(f).
Arguments Presented By the Parties
The applicant argued that DABUS autonomously generated the invention and must therefore be recognised as the true and first inventor. The applicant also argued that the Patents Act does not expressly restrict inventorship to human beings, and relied on foreign decisions, policy materials, and parliamentary recommendations concerning AI based inventions.
The applicant further argued that he owned the DABUS source code, owned the computer on which DABUS operated, and bore responsibility for the maintenance and operation of the system. Based on this, he claimed entitlement to the invention. He also relied on the declaration filed under PCT Rule 4.17(ii).
In the pre grant opposition proceedings, the opponent argued that DABUS, being a non human entity, could not be recognised as an inventor under Sections 2(1)(y), 6 and 7 of the Patents Act. The opponent therefore challenged the maintainability of the application and attempted to bring the inventorship issue within Section 25(1)(f).
The written Submissions of the opponent will be published in a separate post to follow
Court’s Analysis
The Patent Office examined the DABUS inventorship issue in the examination proceedings by directly applying Sections 6, 7 and 10 of the Patents Act. It stated that Section 6 permits a patent application to be filed only by a person claiming to be the true and first inventor, by the assignee of such inventor, or by the legal representative of a deceased true and first inventor. According to the Patent Office, this structure necessarily assumes an inventor who can hold legal rights, assign those rights, and be represented after death. It said that an artificial intelligence system such as DABUS cannot satisfy these legal attributes.
The Patent Office further stated that Sections 7(2), 7(3) and 10(6) require proof of right and a declaration of inventorship. According to it, these provisions necessarily require particulars such as nationality, address, signature, and a valid assignment where applicable. It observed that a machine cannot execute a declaration, cannot possess legal attributes, and cannot transfer rights. On that basis, it held that DABUS could not fulfil the statutory requirements.
The Patent Office also rejected the argument that the absence of an express statutory bar allows non human inventorship. It stated that patent rights are statutory rights, and inventorship must be recognised only within the framework enacted by Parliament. According to the Patent Office, the expression natural person has a settled legal meaning and refers to a human being capable of holding rights and duties. It said that an artificial intelligence system is a technological construct and is not a natural person or a juristic person recognised by law.
On proof of right, the Patent Office stated that ownership of a machine does not confer entitlement to inventions allegedly generated by that machine. It said that Section 7(2) requires proof of right derived from the inventor. Since DABUS was not recognised as a legally valid inventor, ownership of DABUS, its source code, or the hardware on which it operated could not cure the defect.
The Patent Office also rejected reliance on PCT Rule 4.17(ii). It stated that a declaration under the PCT cannot override the mandatory requirements of Sections 6, 7 and 10 of the Patents Act. It further stated that policy recommendations calling for reform of the law on AI generated inventions may be relevant for future legislative action, but they do not alter the present statutory position.
In the pre grant opposition proceedings, the Patent Office took a narrower view. It stated that Section 25(1)(f) permits opposition only on the ground that the subject of a claim is not an invention within the meaning of the Act, or is not patentable under the Act. According to the Patent Office, objections relating to inventorship under Sections 2(1)(y), 6 and 7 concern entitlement to apply and procedural compliance, and not patentability of the claimed subject matter. It therefore held that the Patents Act does not provide an independent ground under Section 25(1) that enables a pre grant opponent to challenge the identity or status of the inventor.
So, on the main issue of inventorship of DABUS in India, the Patent Office made its position clear in the examination proceedings. It held that DABUS cannot be recognised as the true and first inventor under the Patents Act. In the pre grant opposition proceedings, it did not reopen that issue within Section 25(1)(f), because it treated inventorship as an entitlement and procedural issue, and not as a patentability ground available in opposition under that provision.
Findings
The Patent Office held in the examination proceedings that DABUS cannot be recognised as the true and first inventor under the Patents Act, 1970. It also held that the applicant failed to comply with the mandatory requirements relating to declaration of inventorship and proof of right after naming DABUS as inventor.
In the pre grant opposition proceedings, the Patent Office held that the inventorship objection does not fall within the statutory scope of Section 25(1)(f). It therefore rejected the attempt to pursue the AI inventorship issue through that opposition ground.
Case Citation
In re Patent Application No. 202017019068, Order under Section 15 of the Patents Act, 1970 (Patent Office Apr. 15, 2026).
In re Patent Application No. 202017019068, Order under Section 25(1) and Rule 55 of the Patents Act, 1970 (Patent Office Apr. 15, 2026).
Disclaimer
This case blog is based on the author’s understanding of the orders. Understandings and opinions of others may differ. An AI application was used to generate parts of this case blog. Views are personal.