{"id":149444,"date":"2026-04-20T18:46:15","date_gmt":"2026-04-20T13:16:15","guid":{"rendered":"https:\/\/www.bananaip.com\/intellepedia\/?p=149444"},"modified":"2026-04-20T18:46:15","modified_gmt":"2026-04-20T13:16:15","slug":"ai-inventorship-dabus-refusal-india-opponents-submissions","status":"publish","type":"post","link":"https:\/\/www.bananaip.com\/intellepedia\/ai-inventorship-dabus-refusal-india-opponents-submissions\/","title":{"rendered":"AI Inventorship and the DABUS Refusal in India: Patent Opponent\u2019s Submissions in the Patent Office Order"},"content":{"rendered":"

As noted in an earlier post on this blog<\/a>, the patent application filed by Stephen Thaler, which named an artificial intelligence entity as the inventor, was refused by the Indian Patent Office on the ground that an AI entity cannot be recognised as an inventor under the Patents Act. In the matter, Dr. Kalyan C. Kankanala<\/a> had also filed a pre-grant opposition. The Patent Office passed two separate orders. One order refused Stephen Thaler\u2019s patent application, and the other refused the pre-grant opposition filed by Dr. Kalyan C. Kankanala.<\/p>\n

Although the pre grant opposition was refused, the order refusing the patent application substantially incorporates the submissions made on behalf of Dr. Kalyan C. Kankanala. Several parts of the reasoning in the refusal order incorporate the opponent\u2019s written submissions. In a number of places, the order includes, adopts, or closely reproduces portions of those submissions.<\/p>\n

This post looks at the refusal order and examines how the opponent\u2019s arguments were incorporated into the Patent Office\u2019s reasoning on AI inventorship.<\/p>\n

AI Inventorship: Opponent\u2019s Submissions in the Refusal Order<\/h2>\n

The points provided below form part of the opponent\u2019s submissions, and references have been provided for the same.<\/p>\n

Point 1: Two-Tier Personhood under the Patents Act<\/h3>\n

What this argument relates to:<\/strong> This argument distinguishes between two categories of persons under the Patents Act. Persons who may apply for patents has been statutorily extended to corporates, the Government, educational institutions and other body corporates. However, persons who may be named as inventors has not been so extended and remains exclusive to natural persons. The opponent submitted that even though DABUS is the named inventor, the applicant cannot claim the benefit of the corporate-applicant extension because that extension does not apply to inventorship.<\/p>\n

Submission in the pre-grant opposition:<\/strong> Page 16, paragraphs 8, 10 and 11<\/p>\n

Included\/mentioned in the refusal order at:<\/strong> Page 7, paragraph 10.4 (clauses (a) to (c))<\/p>\n

Point 2: Statutory Structure of Section 6 read with Sections 7 and 10<\/h3>\n

What this argument relates to:<\/strong> The opponent submitted that a combined reading of Section 6 (persons entitled to apply), Section 7 (form of application) and Section 10 (contents of specifications) demonstrates that the Patents Act presupposes a natural-person inventor, that is, one who is capable of holding legal rights, assigning such rights, and being represented after death. An artificial intelligence system possesses none of these attributes.<\/p>\n

Submission in the pre-grant opposition:<\/strong> Page 28, paragraph 28; page 31, paragraph 29; page 33, paragraph 32<\/p>\n

Included\/mentioned in the refusal order at:<\/strong> Page 6, paragraph 10.1 (clauses (a) to (c)); page 9, concluding portion of paragraph 19<\/p>\n

Point 3: Mandatory Declaration Requirements under Sections 7(2) to (3) and 10(6)<\/h3>\n

What this argument relates to:<\/strong> The opponent submitted that the procedural requirements of declaration of inventorship, including particulars such as nationality, address and signatures of the inventor, can only be discharged by a natural person. A machine or an artificial intelligence system is inherently incapable of making such a declaration, signing instruments, or asserting a legal status such as nationality.<\/p>\n

Submission in the pre-grant opposition:<\/strong> Page 31, paragraph 29<\/p>\n

Included\/mentioned in the refusal order at:<\/strong> Page 6, paragraph 10.2 (the order\u2019s wording is near-identical to the submission)<\/p>\n

Point 4: Harmonious Construction of Section 2(1)(y)<\/h3>\n

What this argument relates to:<\/strong> The opponent submitted that the negative definition of \u201ctrue and first inventor\u201d in Section 2(1)(y), which excludes only the first importer and the person to whom the invention is first communicated from outside India, must be read harmoniously with Sections 6, 7 and 10. So read, the provision does not affirmatively open the category of inventor to non-humans. The contextual interpretation makes it evident that the term \u201cinventor\u201d presupposes a human actor.<\/p>\n

Submission in the pre-grant opposition:<\/strong> Page 16, paragraph 10; page 21, paragraph 17; page 33, paragraph 32<\/p>\n

Included\/mentioned in the refusal order at:<\/strong> Page 7, paragraph 10.3; page 9, paragraph 20<\/p>\n

Point 5: Section 2(1)(s) and the Express-Recognition Principle<\/h3>\n

What this argument relates to:<\/strong> The opponent submitted that although Section 2(1)(s) extends the meaning of \u201cperson\u201d to include the Government, the provision does not expressly extend personhood to machines, artificial intelligence systems or technological constructs. Where Parliament has chosen to extend personhood beyond natural persons, it has done so expressly. In the absence of any such express extension to AI, the principle of express recognition must apply.<\/p>\n

Submission in the pre-grant opposition:<\/strong> Page 33, paragraph 35<\/p>\n

Included\/mentioned in the refusal order at:<\/strong> Page 7, paragraph 10.4; page 10, paragraph 21<\/p>\n

Point 6: Person Skilled in the Art under Section 2(1)(ja)<\/h3>\n

What this argument relates to:<\/strong> The opponent submitted that the inventive-step yardstick under Section 2(1)(ja), assessed from the standpoint of a \u201cperson skilled in the art\u201d possessing common general knowledge and practical experience in the field of the invention, necessarily presupposes a human mind. The statutory framework does not envisage an assessment of inventive activity originating from an autonomous machine or non-human entity.<\/p>\n

Submission in the pre-grant opposition:<\/strong> Page 33, paragraph 36<\/p>\n

Included\/mentioned in the refusal order at:<\/strong> Page 7, paragraph 10.5 (the order adopts the same syllogism)<\/p>\n

Point 7: UK Supreme Court in Thaler v Comptroller<\/em> [2023] UKSC 49<\/h3>\n

What this argument relates to:<\/strong> The opponent placed extensive reliance on the judgment of the UK Supreme Court in Thaler v Comptroller-General of Patents, Designs and Trade Marks<\/em> [2023] UKSC 49, which construed Section 7 of the UK Patents Act 1977. The opponent submitted that Section 7 of the UK Act is materially analogous to Section 6 of the Indian Patents Act, and that the UK Court\u2019s holding, that an inventor must be a natural person and that an artificial intelligence system cannot qualify, applies squarely to the Indian statute.<\/p>\n

Submission in the pre-grant opposition:<\/strong> Pages 50 to 54, paragraph 57 (with verbatim extracts)<\/p>\n

Included\/mentioned in the refusal order at:<\/strong> Page 9, paragraph 19; page 11, paragraph 23 (the order adopts the same \u201cmaterially analogous\u201d framing)<\/p>\n

Point 8: EPO Board of Appeal on Article 81 EPC read with Rule 19 EPC<\/h3>\n

What this argument relates to:<\/strong> The opponent placed reliance on the rulings of the European Patent Office Board of Appeal in the DABUS matters, which held that the requirement under Article 81 EPC read with Rule 19 EPC, to designate the inventor by name and address, necessarily implies human inventorship, since only a natural person can be identified in the manner contemplated by statute. The opponent submitted that these provisions correspond functionally to Sections 7(3) and 10(6) of the Indian Patents Act.<\/p>\n

Submission in the pre-grant opposition:<\/strong> Pages 44 to 46, paragraph 53; pages 57 to 59, paragraph 59<\/p>\n

Included\/mentioned in the refusal order at:<\/strong> Page 9, paragraph 20<\/p>\n

Point 9: Full Federal Court of Australia in Commissioner of Patents v Thaler<\/em> [2022] FCAFC 62<\/h3>\n

What this argument relates to:<\/strong> The opponent placed reliance on the judgment of the Full Federal Court of Australia in Commissioner of Patents v Thaler<\/em> [2022] FCAFC 62, which construed entitlement provisions analogous to Section 7 of the Indian Patents Act. The opponent submitted that the Court held that entitlement to a patent must be derived from a natural-person inventor and that ownership of a machine does not confer entitlement to inventions allegedly generated by that machine.<\/p>\n

Submission in the pre-grant opposition:<\/strong> Pages 55 to 57, paragraph 58<\/p>\n

Included\/mentioned in the refusal order at:<\/strong> Page 11, paragraph 22<\/p>\n

Point 10: Global Judicial Consensus on AI Inventorship<\/h3>\n

What this argument relates to:<\/strong> The opponent submitted that patent offices and courts in the United Kingdom, the United States, Germany, Japan, Australia and the European Patent Office have uniformly refused to recognise DABUS as inventor under statutory regimes materially analogous to the Indian Patents Act. A foreign-status table covering 30 entries across 18 jurisdictions was placed on record.<\/p>\n

Submission in the pre-grant opposition:<\/strong> Page 60, paragraph 60; pages 41 to 42, paragraph 48 (foreign status table)<\/p>\n

Included\/mentioned in the refusal order at:<\/strong> Page 13, paragraph 25 (the order recites the same six-jurisdiction roll-call: UK Supreme Court, US Federal Circuit, German Federal Court of Justice, Japan IP High Court, EPO Board of Appeal, and Full Federal Court of Australia)<\/p>\n

Point 11: General Clauses Act, 1897, Section 3(42)<\/h3>\n

What this argument relates to:<\/strong> The opponent submitted that the expression \u201cperson\u201d in Indian statutes is ordinarily understood in light of Section 3(42) of the General Clauses Act, 1897, which extends only to legally recognised entities such as companies, associations and bodies of individuals, whether incorporated or not. Machines and artificial intelligence systems are not recognised as legal entities under any statutory framework and therefore fall outside the scope of the expression \u201cperson\u201d.<\/p>\n

Submission in the pre-grant opposition:<\/strong> Page 18, paragraph 13 (cited via Bharat Petroleum Corporation Ltd. v. Union of India<\/em>, AIR 1992 P&H 248)<\/p>\n

Included\/mentioned in the refusal order at:<\/strong> Page 9, paragraph 23 (the order cites Section 3(42) of the General Clauses Act directly)<\/p>\n

Point 12: \u201cNatural Person\u201d Jurisprudence<\/h3>\n

What this argument relates to:<\/strong> The opponent submitted that the expression \u201cnatural person\u201d has a well-settled meaning in law and refers exclusively to a human being recognised by the legal system as capable of holding rights and duties. This understanding is consistent across constitutional law, contract law, property law and intellectual property law. A machine or artificial intelligence system, being a technological construct created through programming, does not possess biological existence and cannot qualify as a natural person.<\/p>\n

Submission in the pre-grant opposition:<\/strong> Pages 17 to 20, paragraphs 12 to 14; page 21, paragraph 15<\/p>\n

Included\/mentioned in the refusal order at:<\/strong> Page 11, paragraph 23; page 12, paragraph 23 (the order recites the same well-settled meaning and notes that judicial authorities of the United States, United Kingdom, Germany, Japan and Australia have uniformly so held)<\/p>\n

A Closing Observation<\/h2>\n

Although the Patent Office did not expressly name or acknowledge the opponent, Dr. Kalyan C. Kankanala, in the refusal order, it did include several of the key legal and statutory points raised in the opposition. The order shows that the submissions were meaningfully taken into account in the final reasoning, even without express mention. In that sense, the Patent Office must be credited for incorporating those substantive points and addressing them within the refusal order, notwithstanding the absence of open acknowledgment.<\/p>\n

Disclaimer<\/h2>\n

This blog post is based on the author\u2019s comparison, understanding, and personal views on the subject. Opinions may differ, and others may interpret the matter differently. The views expressed are solely personal.<\/p>\n","protected":false},"excerpt":{"rendered":"

In Patent Application No. 202017019068, Stephen L. Thaler named DABUS, an artificial intelligence system, as the inventor of a food container invention. Although the Indian Patent Office refused the pre-grant opposition filed by Dr. Kalyan C. Kankanala in a separate order, its order refusing the application substantially Includes\/mentions the opponent\u2019s statutory and comparative-law submissions on inventorship and proof of right.<\/p>\n","protected":false},"author":1,"featured_media":149455,"comment_status":"open","ping_status":"open","sticky":false,"template":"","format":"standard","meta":{"iawp_total_views":6,"footnotes":""},"categories":[6,5495,14],"tags":[5547,4172,1228,42,5682,609,1453,11718],"class_list":["post-149444","post","type-post","status-publish","format-standard","has-post-thumbnail","hentry","category-intellectual-property","category-case-reviews","category-patents","tag-ai-inventorship","tag-dabus","tag-dr-kalyan-kankanala","tag-indian-patent-office","tag-patent-refusal","tag-patents-act-1970","tag-pre-grant-opposition","tag-stephen-thaler"],"_links":{"self":[{"href":"https:\/\/www.bananaip.com\/intellepedia\/wp-json\/wp\/v2\/posts\/149444","targetHints":{"allow":["GET"]}}],"collection":[{"href":"https:\/\/www.bananaip.com\/intellepedia\/wp-json\/wp\/v2\/posts"}],"about":[{"href":"https:\/\/www.bananaip.com\/intellepedia\/wp-json\/wp\/v2\/types\/post"}],"author":[{"embeddable":true,"href":"https:\/\/www.bananaip.com\/intellepedia\/wp-json\/wp\/v2\/users\/1"}],"replies":[{"embeddable":true,"href":"https:\/\/www.bananaip.com\/intellepedia\/wp-json\/wp\/v2\/comments?post=149444"}],"version-history":[{"count":14,"href":"https:\/\/www.bananaip.com\/intellepedia\/wp-json\/wp\/v2\/posts\/149444\/revisions"}],"predecessor-version":[{"id":149463,"href":"https:\/\/www.bananaip.com\/intellepedia\/wp-json\/wp\/v2\/posts\/149444\/revisions\/149463"}],"wp:featuredmedia":[{"embeddable":true,"href":"https:\/\/www.bananaip.com\/intellepedia\/wp-json\/wp\/v2\/media\/149455"}],"wp:attachment":[{"href":"https:\/\/www.bananaip.com\/intellepedia\/wp-json\/wp\/v2\/media?parent=149444"}],"wp:term":[{"taxonomy":"category","embeddable":true,"href":"https:\/\/www.bananaip.com\/intellepedia\/wp-json\/wp\/v2\/categories?post=149444"},{"taxonomy":"post_tag","embeddable":true,"href":"https:\/\/www.bananaip.com\/intellepedia\/wp-json\/wp\/v2\/tags?post=149444"}],"curies":[{"name":"wp","href":"https:\/\/api.w.org\/{rel}","templated":true}]}}