India: AI Machine Not An Inventor Under The Patents Act: UK Supreme Court

In a landmark judgement delivered on December 20, the United Kingdom Supreme Court has declared unanimously that an Artificial Intelligence (AI) machine does not qualify to be an inventor under Sections 7 or 13 of the Patents Act of 1977.

The appeal was filed by Dr Stephen Thaler against the Comptroller General of Patents, Designs and Trademarks and was heard by Justices Lord Patrick Hodge (Deputy President), Lord Nicholas Hamblen, Lord George Leggatt, Lord David Richards and Lord David Kitchin.

Case Background

The appeal was regarding two applications filed under the Patents Act 1977 for the grant of patents for products and processes which are said to be new and not obvious developments of anything known before. As mentioned in the judgement, one unusual feature of the applications was that any inventions they disclose and describe are said to have been generated by a machine acting autonomously and powered by AI. Another feature is that the appellant, Dr Stephen Thaler, maintained that he is entitled to make and pursue the applications on the basis that he is the owner of that machine called DABUS.

The Hearing Officer for the Comptroller-General found that the applications must be taken to have been withdrawn, essentially for the following reasons: first, on Dr Thaler's own case, the machine made the inventions, but the machine did not qualify as an inventor within the meaning of the 1977 Act; secondly, Dr Thaler was not entitled to apply for patents for any inventions described in the applications given that, on his case, they were made autonomously by the machine; and thirdly, in these circumstances, the applications were defective because Dr Thaler had failed to identify any person or persons whom he believed to be the inventor or inventors, and he had failed properly to indicate how he derived the right to be granted the patents.

An appeal by Dr Thaler to the High Court was unsuccessful. On further appeal by Dr Thaler to the Court of Appeal, a majority (Arnold LJ and Elisabeth Laing LJ) agreed with the Hearing Officer and the judge that the applications must be taken to have been withdrawn. On the other hand, Birss LJ, dissenting, would have allowed the appeal and permitted the applications to proceed.

The Court observed that these two applications are part of a project involving parallel applications by Dr Thaler to patent offices around the world. As the Court of Appeal explained, Dr Thaler and his collaborators seek to establish that AI systems can make inventions and that the owners of such systems can apply for and secure the grant of patents for those inventions. This is therefore one of a number of test cases, and it raises issues of some importance, the Supreme Court said.

Chronology Of Decisions

On December 4, 2019, the Hearing Officer issued his decision on behalf of the Comptroller explaining that DABUS was not a person as envisaged by section 7 or section 13 of the 1977 Act and so was not an inventoe. It followed that DABUS had no rights that could be transferred. Further and in any event, DABUS did not have any power to transfer anything that it might have owned. Also, Dr Thaler was not entitled to the grant of a patent on the basis that he owned DABUS. The Hearing Officer held that the applications would be taken to be withdrawn at the expiry of the sixteen-month period specified by rule 10(3).

Dr Thaler's appeal to a judge of the High Court against the Comptroller's decision was dismissed by Marcus Smith J on September 21, 2020. The judge found that section 13 of the 1977 Act had to be read in context and unless an applicant fell within the parameters of section 7, the Comptroller was justified in finding that the application was deficient. Here Dr Thaler, the applicant, was a person but, on his own case, was not the inventor of any invention described in either application. Further, his contention that he was entitled to the grant of the patents for some other reason was hopeless and bound to fail, the High Court observed.

A further appeal by Dr Thaler to the Court of Appeal was dismissed on September 21, 2021. That court held by a majority (Arnold LJ and Elisabeth Laing LJ) that DABUS did not qualify as an inventor within the meaning of the 1977 Act because such an inventor was required to be a person; that there was no general rule of law that any intangible property (including an invention) created by a machine was the property of the machine or the owner of the machine; and that the Comptroller had been right to find the applications would be taken to be withdrawn because Dr Thaler had not identified the person or persons whom he believed to be the inventor or inventors; nor had he identified any proper basis for deriving a right to be granted the patents when he simply asserted, wrongly in law, that it was sufficient that he owned DABUS.

Section 7 – The Right to Apply For And Obtain A Patent

Section 7 of the 1977 Act deals with the right to apply for and obtain a patent:

Any person may make an application for a patent either alone or jointly with another.

The Supreme Court identified the following issues in the case that needed to be examined –

Issue 1: The Scope And Meaning Of "Inventor" In The 1977 Act

Lord Kitchin who authored the judgement noted straight away that this issue has been decided against Dr Thaler at every level in these proceedings and by every judge who has considered it. He states in the judgement –

"In my judgment, the position taken by the Comptroller on this issue is entirely correct. The structure and content of sections 7 and 13 of the Act, on their own and in the context of the Act as a whole, permit only one interpretation: an inventor within the meaning of the 1977 Act must be a natural person, and DABUS is not a person at all, let alone a natural person: it is a machine and on the factual assumption underpinning these proceedings, created or generated the technical advances disclosed in the applications on its own. Here I use the term "technical advance" rather than "invention", and the terms "create" or "generate" rather than "devise" or "invent" deliberately to avoid prejudging the first issue we have to decide. But it is indisputable that DABUS is a machine, not a person (whether natural or legal), and I do not understand Dr Thaler to suggest otherwise."

Issue 2: Was Dr Thaler nevertheless the owner of any invention in any technical advance made by DABUS and entitled to apply for and obtain a patent in respect of it?

This issue was answered by the Supreme Court in the following manner-

"Here Dr Thaler faces two formidable difficulties. The first is that DABUS, a machine with no legal personality, is not and has never been an inventor within the meaning of the 1977 Act. This is more than a formal objection. It goes to the heart of the system for granting a monopoly for an invention. The second is that Dr Thaler, on his own case, has no independent right to obtain a patent in respect of any such technical advance.

Dr Thaler contended that he was entitled to file applications for and obtain the grant of patents for what he characterises as the inventions described and disclosed in each of these applications on the basis of his ownership of DABUS.

The Supreme Court deemed the said argument as without merit and noted that it failed to face up to and address any of the following problems.

Court noted –

"First, Section 7 of the 1977 Act confers the right to apply for and obtain a patent and it provides a complete code for that purpose.

As a starting point, under section 7(2)(a), there must be an inventor, and that inventor must be a person. DABUS was not and is not a person.

Secondly, the applicant, if not the inventor, must be a person falling within one of the limbs of section 7(2)(b) such that, in preference to the inventor, this person was, at the time of the making of the invention, entitled to the whole of the property in it (other than any equitable interest) in the United Kingdom. Alternatively, under section 7(2)(c), this person must be the successor in title to any person mentioned in paragraph (a) or (b)."

Issue 3: Was the Hearing Officer entitled to hold that the applications would be taken to be withdrawn?

Lord Kitchin answered –

"In my view he plainly was. In light of my reasoning thus far I can take this quite shortly. The question must be approached, much as it was by at least the majority of the Court of Appeal, on the basis first, that DABUS is legally incapable of being an inventor within the meaning of the 1977 Act and secondly, that Dr Thaler has not established or indeed provided any plausible basis for his contention that he was entitled to apply for and obtain patents for the technical developments made by DABUS simply as a result of his ownership of that machine."

Noting that Dr Thaler failed to satisfy not satisfy either of the requirements in section 13(2), Lord Kitchin concluded –

"The inevitable consequence was and remains that the applications must now be taken to have been withdrawn. This is not to impose an additional requirement for patentability; nor does it introduce a new ground for refusing patent applications. It is the consequence prescribed by section 13(2) if the applicant fails within the relevant period to file with the UKIPO a statement identifying the person or persons whom he believes to be the inventor or inventors; and where, as here, the applicant is not the inventor, indicating the derivation of his right to be granted the patent."

Overall conclusion

"For all of these reasons, I am satisfied the Comptroller was right to find the applications would be taken to be withdrawn at the expiry of the sixteen-month period specified by rule 10(3). The judge and the majority of the Court of Appeal made no error in affirming that decision and in finding that the applications are now deemed to have been withdrawn. I would dismiss this appeal."

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