Thaler v The Comptroller-General of Patents, Designs And Trade Marks

Factual and Procedural Background

On 17 October 2018 and 7 November 2018 respectively, the Appellant filed two patent applications (the Applications) in his own name. The Applications concern inventions generated by an artificial intelligence machine called DABUS, described as a "Creativity Machine". The Appellant stated in the applications that DABUS was the inventor, and that he acquired the rights by virtue of ownership of DABUS.

The Intellectual Property Office (IPO) notified the Appellant that a statement of inventorship and right to grant must be filed within 16 months, pursuant to section 13 of the Patents Act 1977. The Appellant filed statements naming DABUS as inventor and himself as the assignee by ownership of DABUS.

The IPO rejected the naming of a machine as inventor, holding that the inventor must be a natural person under the Patents Act 1977, and that the Appellant had not demonstrated a valid transfer of rights from the inventor. A hearing was held before the Comptroller's delegate, who determined that DABUS, as a machine and not a person, could not be inventor, could not hold or transfer rights, and that the Applications should be deemed withdrawn after the prescribed period.

The Appellant appealed the decision on grounds including alleged prejudgment, incorrect statutory construction, and improper use of section 13 of the Patents Act 1977.

Legal Issues Presented

1. Whether a non-human entity, specifically an artificial intelligence machine, can be regarded as an inventor under the Patents Act 1977.
2. Whether the Appellant, as owner of the AI machine, can derive or claim the right to the grant of a patent for inventions generated by the machine.
3. If the above are answered negatively, the procedural question of when the Applications should be treated as withdrawn.

Arguments of the Parties

Appellant's Arguments

• The Appellant contended that inventorship should not be restricted to natural persons and that a machine meeting inventorship criteria should qualify as inventor.
• He argued that the rights to inventions generated by an autonomous machine should vest in the owner of the machine.
• The Appellant maintained that the Patents Act 1977 and European Patent Convention do not explicitly prohibit patents for autonomous machine inventions.
• He asserted that denying inventorship to machines undermines the patent system and moral rights of inventors, and that acknowledging machines as inventors would provide clarity and incentivize innovation.
• The Appellant disavowed that the machine has legal personality and did not claim that the machine itself could assign rights, but contended that ownership of the machine should confer rights to the invention.
• He challenged the IPO’s use of section 13 as a sanction to refuse the application and argued that his honest belief in entitlement should suffice.

Respondent's (IPO) Arguments

• The IPO maintained that under the Patents Act 1977 a person, meaning a natural person, must be named as inventor.
• The IPO held that a machine cannot hold or transfer property rights, and thus no valid transfer of rights to the Appellant existed.
• The IPO argued that section 13 requires identification of a person as inventor and that failure to comply results in withdrawal of the application.
• The IPO emphasized that the question of legal personality for AI is a complex policy matter for the legislature, not the courts.

Table of Precedents Cited

Court's Reasoning and Analysis

The court carefully examined the statutory framework of the Patents Act 1977, focusing on sections 7 and 13. It found that:

• The term "inventor" as defined in section 7(3) means the "actual deviser" of the invention, which the court interpreted as a natural person.
• Only a person can hold property rights, including patents; machines lack legal personality and so cannot be inventors or hold rights.
• The statutory scheme in section 7(2) identifies three classes of persons entitled to a patent: (a) the inventor(s), (b) persons entitled by law or agreement, and (c) successors in title. All classes require the recipient to be a person.
• The Appellant’s contention that ownership of the machine confers rights to the invention was rejected because there is no legal mechanism for transfer of rights from a non-person inventor.
• Section 13 requires identification of a person as inventor and the derivation of rights; failure to comply results in the application being deemed withdrawn.
• The court rejected the Appellant’s argument that section 13 provides an independent right to a patent without reference to section 7.
• The IPO's practice of not accepting AI machines as inventors was upheld as consistent with the law.
• The court acknowledged that the law may need to evolve to address AI inventions but that such changes are a matter for the legislature, not the courts.
• The Appellant’s allegation of prejudgment based on IPO internal guidance was dismissed, with assurance that the decision was made impartially on the law.

Holding and Implications

The court DISMISSED the Appellant’s appeal and upheld the decision that the Applications should be deemed withdrawn for failure to comply with section 13 requirements.

This decision confirms that under current UK patent law, inventorship is limited to natural persons, and that inventions generated autonomously by AI machines cannot be patented with the machine as inventor. Ownership of the machine does not confer rights to patent the machine's inventions absent a valid transfer from a person inventor.

No new precedent was established beyond the application and clarification of existing statutory provisions. The court emphasized that any reform to accommodate AI inventorship falls to the legislature, not the judiciary.