The Court of Appeal has denied Dr Thaler the grant of patents for inventions generated by DABUS, an Artificial Intelligence (AI) machine created and owned by him .

The facts surrounding the case are known to many around the world. This matter is an international test case advanced by Dr Thaler and his collaborators to establish whether owners of AI systems can obtain patents for inventions generated by those systems. The Court of Appeal held by a two to one majority, that the UK Patents Act 1977 provided a complete code, under which a patent cannot be granted where the inventor identified in the patent application is not a person. It was accepted by Dr Thaler that a machine is not a person (as is clearly the case). This means that, if patents are to be granted in respect of inventions made purely by machines (as opposed to using the machine as a tool to find inventions), there must be a change in the law, unless the applicant inaccurately identifies a person as an inventor in the patent applications. The Court did not decide whether the inventor had to be a natural or a legal person.

This ruling affirms the High Court's decision, which was itself an appeal from the decision of the UK IPO, both denying grant of a patent. Given the significance of the decision, it may well be appealed to the Supreme Court. For a simple comparison, we provide below a short summary of the chronology of main events and decisions on Dr Thaler's patent applications around the world.

The present case merely addresses a very narrow point as to whether a patent applicant, who names an AI machine as an inventor could be granted a patent, leaving open many other interesting questions on patentability of AI-based inventions. Some of these are also identified in this article.

Background

Dr Stephen Thaler created an artificial intelligence machine called DABUS (Device for the Autonomous Bootstrapping of Unified Sentience) programmed to create inventions. As explained by Dr Thaler, unusually (compared to many other patent applications that uses AI as a tool), DABUS was not created to solve any particular problem, was not trained on any special data relevant to the present invention, and the machine rather than a person identified the novelty and salience of the present invention. The inventions that were subject of the patent applications do not matter for the purposes of the issues addressed.

Dr Thaler applied for patents in respect of these machine generated inventions before the UK IPO, the European Patent Office (EPO) the USPTO, and other jurisdictions via the PCT route, making it clear that the inventor was DABUS, and DABUS only, and, in the UK case, claimed himself as the applicant by virtue of owning DABUS.

The UK IPO rejected the patent applications. The decision was challenged and the case then proceeded on the assumption that the following three facts were true:

  1. That DABUS created the invention;
  2. That the inventions were patentable/potentially patentable; and
  3. Dr Thaler was the owner and creator of DABUS and the person who set it up to create the inventions in this case.

Dr Thaler had refused to submit that he, as owner/controller of an artificially intelligent machine that "invents" something can be said to be the inventor not merely because he considered it bad in law, but more importantly because (in moral terms) he considered that he would illegitimately be taking credit for an invention that was not his.

Relevant UK Patent Law

Section 7 of the Patents Act 1977 is an exhaustive code for determining who is entitled to be granted a patent. Under this provision, the right to be granted a patent is primarily given to the inventor (s.7(2)(a)) or in the alternative, to the person who has the right to stand in the place of the inventor owing to a legal effect, be it a rule of law, any other law, or an agreement (per s.7(2)(b) - e.g. an employer gaining the right to the invention made by its employees) or by being a successor in title (s.7(2)(c)).

Further, UK Patent law (s.13(2)) requires an applicant for a patent to identify the person who is believed to be the inventor (s.13(a)) and to indicate how they derived the right to apply for the patent if they were not the inventor (s.13(2)(b)). According to s.13(2), the failure to do so results in the deemed withdrawal of the application.

The Court of Appeal decision

The issue before the Court was whether the requirements under s.13(2)(a) and (b) were met.

i. Did Dr Thaler fulfil his obligations under s.13(2)(a)?

In accordance with s.13(2)(a), the applicant must provide a statement to the UK IPO identifying who is "believed to be the inventor" in his application. Dr Thaler had honestly stated that DABUS was the inventor of the invention. The question before the Court was whether DABUS, an AI machine, could qualify as an inventor.

The Court of Appeal reviewed the case law, history of UK patent law, interpreted a number of provisions of the Patents Act and of international laws, and unanimously held that the "inventor" had to be a person within the meaning of the Patents Act, in agreement with the decisions of the lower tribunals. It therefore followed that a machine was legally incapable of being an inventor under UK patent law.

Unlike the decisions below, the Court of Appeal did not elaborate on whether the inventor could be a legal person (such as a company) as well as a natural person (an individual person). That point did not have to be decided because there was no debate that DABUS was not any sort (natural or legal) of person.

The majority of the Court considered that it was not sufficient to make a genuine statement as to who was believed to be the inventor, but that the identified inventor had to be a person. DABUS was not. On this basis, the requirement under s.13(2)(a) was not met.

ii. Did Dr Thaler fulfil his obligations under s.13(2)(b)?

In accordance with s. 13(2)(b), the applicant must indicate the derivation of the applicant's right to grant. The Court considered whether the applicant had the correct legal basis to his entitlement, in accordance with s.7.

Dr Thaler stated that he owned the machine and so he owned the invention created by the machine. He contended that a rule of law known as the common law doctrine of accession applied, and that fell within s.7(2)(b). The effect of this doctrine was to give a person who has exclusive possession of a tangible item which produces a new tangible item exclusive possession over the new tangible item - akin to the owner of a fruit tree being generally regarded as owning the fruit produced by that tree.

The Court of Appeal considered that the doctrine of accession did not apply analogously where the existing tangible property gave rise to a new intangible property (such as intellectual property rights) because intangibles are non-rivalrous (meaning that the thing is capable of being consumed multiple times, unlike a tangible item e.g. an apple, which is capable of being consumed only once). One of the analogies given by the Court of Appeal is of a copyright subsisting in a photograph taken by a person from a borrowed camera. The camera owner owns the camera, but would not be regarded as being the owner of the copyright subsisting in the photograph.

In any event, section 7(2)(b) gives effect to a legal right of someone other than the inventor to stand in the place of the inventor with the right to apply for and obtain a patent, where the inventor would otherwise be entitled to apply. Machines were legally incapable of being an inventor, and furthermore had no rights which the owner could claim instead of the machines. There was therefore no rule of law which conferred Dr Thaler the right to apply for patents created by DABUS in the circumstances.

The requirement under s.13(2)(b) was therefore not met.

iii. Application of s.13(2) resulting in deemed withdrawal of the patent applications

The Court of Appeal by a majority therefore found that Dr Thaler failed to comply with s.13(2). Non-compliance of s.13(2) meant that the patent applications had to be accordingly deemed withdrawn.

Such non-compliance reinforced the fact that the patent application fell foul of s.7 of the Patents Act which provides that only an inventor (who is a person) or a person who has the legal right to be granted a patent instead of the inventor (under s.7(2)(b) or (c)) may be granted the patent.

iv. The dissenting decision

This was not a unanimous decision of the panel of three Court of Appeal judges. Birss LJ, a recently appointed but highly regarded and well established patent judge, agreed that the inventor had to be a person and so not a machine. However, despite this, in his view, that did not mean that a patent cannot be granted to Dr Thaler.

In his view, the requirements under s.13(2) were fulfilled simply be providing the information required honestly. Unlike the other two judges on the panel, he considered that the purpose of this section was simply to give the UK IPO information which will be made public. The majority did not agree.

In Birss LJ's view, the failure to identify a person as an inventor did not mean that the requirements of s.13(2)(a) were not met. It was sufficient that the applicant stated who they genuinely believed the inventor to be. The history of UK patent law meant that the true identity of the inventor was no longer relevant to the question of whether a patent should be granted.

Further, Birss LJ considered that the requirements of s.13(b) were also met, as Dr Thaler had provided the reasons for claiming the right to be granted the patent. He considered that the UK IPO was not required to examine whether the basis was legally sound. There were mechanisms for rightful applicants to challenge entitlement to the patent under the Patents Act (s.8 for pre-grant and s.37 for post-grant). The position adopted by Birss LJ does have a logical basis, and might be seen to reflect the reality of the real world in a dawning AI era.

What is happening around the world?

The DABUS case has sparked much debate around the world. We set out the main developments below. The USPTO and the EPO have so far interpreted and applied the relevant patent laws and this has resulted in findings by both offices that inventors of a patent had to be a natural person. The UK Court of Appeal decision adopts the same approach; it was firmly of the view that the inventor had to be a person, leaving the question open as to whether it had to be a natural person. The only jurisdiction which has ruled that an inventor can be non-human is Australia. The Judge there considered that patent rights should not be denied where the invention was generated from an AI machine because to do so would be inconsistent with promoting innovation, which underpins the objective of the intellectual property systems. In South Africa the patents sought were granted without the issue of the legal status of the owner being considered in any detail.

Date Event Comments

17 October 2018 & 7 November 2018

Dr Thaler files two UK patent applications.

  

4 December 2019

UK IPO rejects the Thaler patent applications. The IPO dismissed the appeal, holding a machine could not qualify as an inventor under the UK Patents Act and that a person – meaning a natural person and not merely a legal person, must be identified as the inventor. Nor was the IPO satisfied that a machine could own any IPR or transfer them to Dr Thaler even if it could qualify as an inventor.

Thaler appeals the IPO examiner's decision to reject the patent application.

27 January 2020

The EPO rejects the Thaler patent applications stating that the inventor must be a natural person, and because Dr Thaler failed to show that he validly acquired the right to the patent from DABUS.

Dr Thaler initially stated that he acquired the right as employer then changed his case to say that he was a successor in title. The case has changed shape since the decision and the oral hearing is planned for 21 December 2021.

22 April 2020

The USPTO decides that the patent applicant must name a natural person as the inventor and thus patents cannot be granted to Dr Thaler.

  

21 September 2020

UK High Court dismisses Thaler's second appeal affirming the finding of the IPO.

The UK High Court affirms the IPO's decision.

28 July 2021

South Africa issues patents invented by DABUS.

The grant by the IPO in South Africa resulted without the application needing to undergo any substantive examination.

The patent application was made via the Patent Cooperation Treaty, which meant that different rules apply.

30 July 2021

The Federal Court of Australia decides that the Thaler patents should be granted.

The Australian Court accepted that an AI machine can be recognised as an inventor under the Australian Act. The Court was of the view that to so hold was consistent with the reality of the current technology and with promoting innovation.

The patent application was made via the Patent Cooperation Treaty, which meant that different rules apply.

This decision has been appealed.

2 September 2021

The District Court of Eastern District of Virginia issues an opinion holding that an AI system cannot be named as an inventor of a patent.

This decision has been appealed.

21 September 2021

UK Court of Appeal dismisses the appeal, denying Dr Thaler the right to apply for the patents, because the inventor must be a person. Machine had no rights (including the right to apply for a patent) and so Dr Thaler did not gain any rights by being the machine's owner.

The applicant has appealed to the Supreme Court.

16 November 2021

It was reported that the German Patent Court has decided that the designated inventor must be a natural person even where the AI machine is the inventor, but the AI machine may be additionally listed as inventor.

This decision appears to be similar to other decisions insofar as it held that the designated inventor must be a natural person.

21 December 2021

EPO Board of Appeal oral hearing and decision to reject the application, because no person had been identified as inventor.

The decision was published in the EPO's press release, with the written reasoning to follow.

Impact of the Court of Appeal decision and the questions that the decision does not address

The present case merely addresses a very narrow point as to whether the patent applicant, who names an AI machine as an inventor can, as a matter of law, be granted a patent. The Court of Appeal fully endorsed the previous decisions which made clear that the function of tribunals was to apply the law as it is, not to create the law in order to arrive at a result deemed right, no matter how great the need to reward AI-generated inventions with patent rights. It therefore does not provide any guidance on many pressing IP policy questions, some of which identified below:

  • Can a natural person qualify as an inventor:
    • by virtue of having exhibited inventive skill in developing a program to solve a particular problem?
    • by skillfully selecting data to provide to an AI machine?
    • by identifying the output of a machine as inventive?
  • If any of these human contributions were to be rewarded patent protection, what should the extent of the contribution be in proportion to the invention as a whole?
  • Can a natural person qualify as an inventor by owning or controlling an AI machine that was capable of inventing?
  • Should AI machines / or any other non-human be recognised as inventors?
  • Should AI generated inventions be conferred a patent, or some other form of IP right?
  • Should an owner of a thing be entitled to be the owner of the intangible fruits of that thing?

It is clear from the UK Court of Appeal's decision that the "should" questions will require a change of law in the UK. Subject to any appeal decision, in the meantime, and in a non test-case scenario, applicants would be likely to list the owner or the controller of a purely machine generated invention, at least in the UK. However, most inventors would wish to protect their inventions in the US where deliberately misrepresenting the identity of the inventor could attract criminal liability.

The DABUS case may be the much needed concrete example demonstrating the importance of considering the operation of the intellectual property system specifically with AI-based technological advances in mind. In response to the UKIPO's Open consultation on AI inventions, on 23 March 2021 the UK government acknowledged the need to ensure that the inventorship criteria do not present a barrier to protecting investment in AI generated innovation and that it will consider a range of possible policy options including legislative changes to ensure that the UK intellectual property system supports and incentivises AI generated innovation and development. The government's National AI Strategy launched this week acknowledges that an effective IP system is fundamental to the Government's ambition for the UK to be a 'science superpower', and stated that the consultation on copyright areas of computer generated works and text and data mining, and on patents for AI devised inventions will be launched before the end of the year as a next step. The government promises that the consultation will include a focus on how to protect AI generated inventions which would otherwise not meet the inventorship criteria.