Posted: 14/12/2021
As the development of artificial intelligence (AI) and machine learning accelerates, it was inevitable that the courts would be called to answer the question of whether or not a machine can be an inventor for the purposes of applying for a patent.
On 21 September 2021, the Court of Appeal handed down its decision in the case of Stephen Thaler v Comptroller General of Patents Trade Marks and Designs [2021] EWCA Civ 1374. By a majority of 2 to 1 the court dismissed the appeal of Dr Stephen Thaler who filed two patent applications naming his AI machine DABUS as the inventor. This judgment affirms the UK’s current position that, under the Patents Act 1977, the right to apply for an invention must originate from a human inventor. An AI system cannot be named as the inventor on a patent application.
This case, instigated by Dr Thaler, Robert Jehan, Professor Ryan Abbott, and others, is one of the many test cases that these individuals have initiated in a number of jurisdictions to establish whether an AI can be an inventor, and thereby be granted a patent in its own right.
Section 7 of the Patents Act 1977 provides an exhaustive code for determining who is entitled to be granted a patent. The right to be granted a patent is primarily given to the inventor (s7(2)(a)). Section 13(2) of the act states that an applicant for a patent must file a statement identifying the person or persons whom they believe to be the inventor and must also explain their eligibility to apply for the patent - ie because they are the inventor, because they have the right to apply under an agreement or rule of law, or because they are a successor in title.
Dr Thaler applied for two patents stating that DABUS was the inventor and that he had derived the right to apply for the patents by virtue of his ownership of the DABUS machine. The UK Intellectual Property Office (UKIPO) deemed the patent applications to have been withdrawn on the basis that DABUS could not be considered an inventor and Dr Thaler had failed to meet the requirements of section 13(2).
Dr Thaler appealed the UKIPO’s decision to the High Court, which had ruled against Dr Thaler in September 2020. The High Court held that the Patents Act requires that a person making a patent application must be a 'person' with legal personality, whether a human or corporation, and that a patent can only be granted to such a 'person' with legal personality. Dr Thaler appealed further to the Court of Appeal.
There were three core questions that the Court of Appeal had to decide in the appeal.
The Court of Appeal unanimously concluded that under the act, an inventor must be a person. The act defines an inventor as “the actual deviser of the invention” (s7(3)) and the judges noted that the grant of a patent confers rights on its owner that are not capable of being owned or exercised by a machine. While it was accepted that DABUS had created the invention, this did not mean that the machine was the inventor within the meaning of the act.
There was disagreement between the judges on the application of section 13 and whether the UKIPO’s conclusion, that Dr Thaler had failed to provide the required information to identify the inventor(s) and his derivation of his rights to be granted the patent under section 13(2), was indeed correct.
The judges agreed that the comptroller is not required to assess whether or not the applicant has correctly identified the inventor(s) or the applicant’s entitlement to apply for the patent. However, the examiner at the UKIPO must consider if, at face value, the statements provided by the applicant appear to comply with the statutory requirements.
LJ Arnold and Elisabeth Laing LJJ held in the majority judgment that Dr Thaler had failed to comply with the section 13(2) requirements, as an inventor must be a person and he had deliberately identified a non-person (DABUS) as the inventor. He had also failed to identify “the derivation of his right…to be granted a patent” as he asserted that he was entitled to apply for DABUS’ invention by virtue of his ownership of the DABUS machine.
The majority judges held that there is no rule of law under which ownership of a tangible object grants automatic ownership to intangible property created by that object and, therefore, this could not provide him with an entitlement to apply for the patents.
Birrs LLJ in his dissenting argument held that the purpose of section 13(2) was simply the creation of a public record of who is said to be the inventor and how the applicant is said to derive title from them. In his view, Dr Thaler had complied with this specific requirement as he had provided a statement identifying the person he believed to be the inventor and had given an indication of the derivation of his right to be granted the patent.
In the majority (Birss LJ dissenting), the Court of Appeal held that the comptroller was correct in finding the application was deemed withdrawn under s13(2) as a result of Dr Thaler’s failure to identify an inventor, as DABUS did not meet the requirement, and failing to identify his entitlement to apply for the patents as his ownership of the DABUS machine was not sufficient for entitlement to the invention.
This ruling confirms the UK’s current position that an inventor on any patent application has to be a person with legal personality, and any application that does not meet this requirement is unlikely to progress to grant.
However, this may not be the final word on the issue. Dr Thaler has the opportunity to appeal the Court of Appeal’s decision and it is understood that an application for permission to appeal has now been made to the UK Supreme Court. Further, AI and AI-generated intellectual property is already high up on the UK Government’s agenda. In March 2021, the Government published its response to a consultation it ran in 2020 for views on AI and intellectual property and, in September 2021, it published its National AI Strategy which outlines the Government’s view of how to make the UK a global AI superpower.
The Government has also promised a further consultation later this year with a view to making policy and legislative changes, which could include changes to future applications for patents to include AI as an inventor.
To allow AI inventorship will require a change to the statutory definition of person or the addition of a new definition of person to include AI. This would be a major step to take. In addition, there would need to be legal clarity on the derivation of rights to AI inventions as the argument asserted by Dr Thaler was not accepted. Whether policy will determine that these changes should be made is unclear but the issues raised by this case will need to be addressed if the UK is to achieve its goal to lead the world in the AI debate.
Patent offices and courts in other countries have also grappled with the issues raised by the DABUS patent applications. Both the European Patent Office and United States Patent and Trademark Office agreed with the decision made by the UKIPO by refusing to allow the application made by Dr Thaler. Both courts held that the inventor, for the purposes of a patent application, must be a natural person with legal capacity.
In contrast, the Australian Patent Office and South African IP Office both granted Dr Thaler’s application. It should be noted that South Africa operates a depository system meaning that only basic formal requirements are checked by the patent office before granting the application. As such, the application was not subject to any formal review.
The application was referred to the Australian courts and the judge held that, on a review of Australia’s Patent Act 1990, an inventor could be an AI system or device but it could not be an applicant or a grantee of a patent. This is an interesting distinction with a seemingly broader interpretation of the requirements for an inventor of a patent. This approach, which allows AI inventors, could inform other jurisdictions’ view of the requirements for an inventor that could be distinct from those for an applicant or owner of a patent.
Whether this has any impact on the UK’s approach in future legislation - or even on a Supreme Court referral - remains to be seen but it is clear that patent law will need to keep up with the new challenges posed by AI inventorship.
This article has been co-written with Shaan Mehra, trainee solicitor in the IP, IT and commercial team.
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