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Thaler v Comptroller-General of Patents, Designs and Trade Marks
Factual and Procedural Background
The Appellant filed two United Kingdom patent applications on 17 October 2018 and 7 November 2018 for (1) a novel food or beverage container and (2) an emergency light beacon. Each application expressly stated that the Appellant was not the inventor; instead, the inventions were said to have been autonomously generated by an artificial-intelligence system named “DABUS,” which the Appellant owns.
The Patent Office asked the Appellant to submit formal Form 7 statements under section 13 of the Patents Act 1977, identifying the inventor(s) and explaining the Appellant’s right to apply. The Appellant replied that DABUS was the inventor and that ownership of the machine conferred entitlement.
A Hearing Officer held, on 4 December 2019, that:
- DABUS is not an “inventor” within the meaning of the 1977 Act.
- The Appellant’s entitlement claim—based solely on machine ownership—was unsound.
- The statutory statements were therefore defective and the applications were deemed withdrawn at the end of the 16-month period prescribed by rule 10(3) of the Patent Rules 2007.
The High Court dismissed the Appellant’s appeal ([2020] EWHC 2412). The Court of Appeal, by majority, did likewise ([2021] EWCA Civ 1374). One Lord Justice dissented, holding that honest belief in DABUS as inventor sufficed procedurally. The present judgment of the Supreme Court (per Judge Kitchin) affirms the majority view.
Legal Issues Presented
- Whether an artificial-intelligence machine can qualify as an “inventor” under sections 7 and 13 of the Patents Act 1977.
- Whether mere ownership of such a machine gives its owner entitlement to apply for and receive a patent for machine-generated inventions under section 7(2)(b) or (c).
- Whether the Appellant’s Form 7 statements satisfied section 13(2), and, if not, whether the Patent Office correctly treated the applications as withdrawn.
Arguments of the Parties
Appellant's Arguments
- Ownership of the AI system confers property in, and entitlement to, its autonomous inventions; therefore the owner may seek patents.
- The 1977 Act does not oblige an applicant to name a natural person as inventor when none exists.
- The Appellant’s Form 7 statements met section 13(2) because they honestly identified DABUS as inventor and indicated derivation of right via ownership.
- The Hearing Officer exceeded his statutory remit by probing the substantive validity of the entitlement claim.
The Patent Office's Arguments
- The statutory definition of “inventor” is confined to natural persons; a machine cannot hold that status.
- Because no person was identified as inventor, section 13(2)(a) was not satisfied, mandating withdrawal of the applications.
- The Appellant does not fall within any entitlement category in section 7(2) and therefore cannot receive a patent even if the formal defect were cured.
Table of Precedents Cited
| Precedent | Rule or Principle Cited For | Application by the Court |
|---|---|---|
| Rhone-Poulenc Rorer International Holdings Inc v Yeda Research and Development Co Ltd [2007] UKHL 43 | Sections 7(2) and 7(3) form an exhaustive code; an inventor is the natural person who devised the invention; patents may be granted only to the inventor or someone claiming through the inventor. | Relied on to confirm that only natural persons can be inventors and that entitlement must trace back through a natural person. |
| Nippon Piston Ring Co Ltd's Applications [1987] RPC 120 | Applicants must indicate the legal basis of their entitlement; vague or incomplete statements breach section 13(2)(b). | Cited to illustrate that failure to provide a meaningful derivation of right justifies deeming an application withdrawn. |
| University of Southampton's Applications [2004] EWHC 2107 (Pat) | Inventor is the natural person who contributed the inventive concept. | Quoted, with approval, for the proposition that “inventor” means a natural person. |
Court's Reasoning and Analysis
1. Meaning of “Inventor”. Section 7(3) defines an inventor as the “actual deviser” of the invention; case law interprets this as a natural person. The statutory scheme (sections 7, 8, 13, 37) consistently presupposes legal personality. Consequently, an AI system cannot be an inventor.
2. Entitlement of the Appellant. Section 7(2) allows grants only to (a) the inventor, (b) a person entitled through the inventor, or (c) a successor in title. Because DABUS is not an inventor, no chain of title can arise. The doctrine of accession, invoked by the Appellant, applies to tangible property and has no footing in patent law; therefore ownership of the machine does not confer property in its putative inventions.
3. Compliance with Section 13. The Appellant failed to: (a) identify any person believed to be the inventor, and (b) provide a legally plausible derivation of right. The Hearing Officer was thus statutorily obliged to treat the applications as withdrawn. The Patent Office did not exceed its limited examination role; the deficiency was apparent on the face of the statements.
4. Policy Considerations. While rapid AI advances may warrant legislative review, the Court’s duty is to apply the existing 1977 Act as enacted. Any expansion of inventorship to machines requires parliamentary amendment, not judicial reinterpretation.
Holding and Implications
APPEAL DISMISSED. The two patent applications are deemed withdrawn for non-compliance with section 13, and the Appellant is not entitled to patents for the AI-generated material.
Implications: The judgment confirms that, under current United Kingdom law, only natural persons can be inventors, and patent entitlement must derive from such a person. Owners of autonomous AI systems cannot obtain patents for machine-generated inventions unless a human inventor can legitimately be identified. No new legal principle was created; rather, the Court reaffirmed the statutory framework, signalling that any change must come from legislation.
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