AI Cannot Be Recognized as Inventor under UK Patents Act 1977
Thaler v. Comptroller General of Patents Trade Marks And Designs ([2021] EWCA Civ 1374)
Introduction
The landmark case of Thaler v. Comptroller General of Patents Trade Marks And Designs ([2021] EWCA Civ 1374) delves into the burgeoning intersection of artificial intelligence (AI) and intellectual property law. Dr. Stephen Thaler, an inventor and entrepreneur, submitted two patent applications in 2018, designating his AI machine, DABUS (Device for the Autonomous Bootstrapping of Unified Sentience), as the inventor. These applications pertained to a "Food Container" and "Devices and Methods for Attracting Enhanced Attention." The UK Intellectual Property Office (UKIPO) subsequently deemed these applications withdrawn, citing non-compliance with section 13(2) of the Patents Act 1977. Dr. Thaler's subsequent appeals raised pivotal questions about the legal recognition of AI as inventors and the procedural handling of patent applications involving non-human inventors.
Summary of the Judgment
The Court of Appeal reviewed prior decisions by Lower Courts, including the High Court, which upheld UKIPO's initial decision. Central to the appellate judgment was the interpretation of the term "inventor" within the framework of the Patents Act 1977. The court reaffirmed that, under current UK law, an inventor must be a natural person. Consequently, DABUS, being an AI machine without legal personality, cannot qualify as an inventor. Furthermore, despite Dr. Thaler's ownership and creation of DABUS, the court determined that he did not establish a valid legal basis under section 7(2)(b) to apply for patents on behalf of the machine. Dr. Thaler's compliance with the procedural requisites of section 13(2) was also scrutinized. The court concluded that his statements failed to identify a human inventor and improperly attributed inventorship to a machine, thereby justifying the deemed withdrawal of the patent applications. Ultimately, the Court of Appeal dismissed Dr. Thaler's appeal, upholding the position that AI cannot be recognized as inventors under the prevailing legal statutes.
Analysis
Precedents Cited
The judgment extensively referred to Yeda Research and Development Company Ltd v. Rhone-Poulenc Rorer International Holdings [2007] UKHL 43. In this case, Lord Walker defined the "property right" in inventions as arising the moment the invention is made, emphasizing that it must include the right to apply for and be granted a patent. This precedent underscored that only a natural person could hold such rights, thereby aligning with the court’s stance in Thaler’s case. Additionally, historical interpretations from the Statute of Monopolies of 1623 and the Patents Act 1949 provided foundational context, illustrating a consistent legislative intent to link inventorship with personhood.
Legal Reasoning
The court's legal reasoning was anchored in a strict interpretation of sections 7 and 13 of the Patents Act 1977. Section 7(3) defines an inventor as "the actual deviser of the invention," with "deviser" being unequivocally tied to a natural person, as corroborated by dictionary definitions and prior case law. The court posited that rights associated with inventorship—such as the right to apply for a patent—must belong to entities capable of holding and transferring property rights, inherently excluding machines or AI systems. Moreover, the court examined section 13(2), which mandates that applicants must identify the inventor(s) and elucidate the derivation of their right to the patent. Dr. Thaler's failure to name a human inventor and his attempt to attribute inventorship to DABUS failed to meet these statutory requirements. The court dismissed arguments relying on the common law doctrine of accession, clarifying that this doctrine pertains to tangible property and does not extend to intangible creations like inventions. The judgment also addressed procedural aspects, affirming that the Comptroller's role under section 13(2) is not to validate the factual accuracy of the applicant's statements beyond their compliance with statutory mandates. The court underscored that any challenges to entitlement must be pursued through separate legal mechanisms, such as applications under sections 8 or 37, rather than through the patent application process itself.
Impact
This judgment has profound implications for the future of AI-driven innovation and intellectual property law in the UK. By conclusively establishing that only natural persons can be recognized as inventors, the court set a clear boundary that current AI systems like DABUS cannot independently hold inventorship status. This decision necessitates that human intermediaries, such as the developers or owners of AI systems, must be designated as inventors in patent applications, even if the inventive process was predominantly driven by AI. The outcome also signals to patent offices and inventors the imperative to adhere strictly to statutory definitions and procedural requirements when filing patent applications involving AI-generated inventions. It underscores the necessity for legislative bodies to revisit and potentially revise intellectual property laws to address the evolving capabilities of AI and other autonomous systems in the realm of innovation.
Complex Concepts Simplified
Understanding Inventorship under the Patents Act 1977
The term "inventor" is a cornerstone of patent law, defining who holds the rights to apply for a patent. Under section 7(3) of the Patents Act 1977, an inventor is explicitly the person who "actually devised" the invention. This legal definition inherently requires inventors to be natural persons—individuals capable of holding and transferring property rights. Consequently, non-human entities, including AI systems like DABUS, are excluded from inventorship status.
Section 13(2) Compliance Explained
Section 13(2) of the Patents Act 1977 imposes specific obligations on patent applicants. It requires them to:
- Identify the person or persons they believe to be the inventor(s) of the invention.
- Indicate the derivation of their right to be granted the patent, especially if they are not the inventors themselves.
Doctrine of Accession and Its Inapplicability
The common law doctrine of accession pertains to the ownership of new tangible property produced by existing tangible property. For instance, if someone’s tree produces fruit, the owner of the tree owns the fruit. However, this doctrine does not extend to intangible assets like inventions. Therefore, the ownership and inventorship of intangible innovations remain distinct and are governed by specific intellectual property laws, separate from doctrines applicable to physical property.
Conclusion
The Court of Appeal's decision in Thaler v. Comptroller General of Patents Trade Marks And Designs conclusively affirmed that under the current UK Patents Act 1977, only natural persons can be recognized as inventors. AI systems, regardless of their role in autonomously generating inventions, lack the legal personhood required to hold inventorship status. This ruling underscores the necessity for human intermediaries in the patenting process of AI-generated inventions and highlights a significant gap in the existing legal framework concerning the intersection of AI and intellectual property rights. As AI continues to advance and play a more substantial role in innovation, this judgment serves as a clarion call for legislative bodies to revisit and potentially reform patent laws to accommodate the evolving technological landscape. Until such reforms are enacted, inventors leveraging AI must navigate the existing legal boundaries by ensuring that human individuals are accurately designated as inventors in all patent applications.
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