Back in Autumn last year the Court of Appeal ruled in Thaler v Comptroller General of Patents Trade Marks and Designs  that an AI machine cannot own the rights to a patent under English law.
This appeal arises from a decision of the UK Intellectual Property Office (UKIPO) which resulted in the failure of two patent applications. Both applications were filed by Dr. Stephen Thaler who stated the inventor of both patents to be DABUS, the name of the AI machine he had created.
The applications were deemed to have failed by the UKIPO because DABUS was not a ‘person’ in accordance with section 7 of the Patents Act 1977 so it could not be the inventor. Dr. Thaler was not entitled to derive the right to be granted a patent under section 13 of the Patents Act 1977 from his ownership of DABUS.
Dr Thaler appealed this decision to the High Court, which dismissed his appeal and upheld the UKIPO’s decision on both grounds. Dr. Thaler was given permission to appeal this decision to the Court of Appeal.
A patent can be granted to give the inventor the right to stop others from making or using their invention without their permission for a limited time period. In the UK patents are governed by the Patents Act 1977 and the sections of particular relevance to this case were sections 7 and 13.
Section 7 outlines who has the right to apply for and be granted a patent. It sets out that any person can apply for a patent and that it is the inventor, who is defined as the ‘actual deviser of the invention’, who may be granted a patent.
Section 13 outlines how the inventor or joint inventors have the right to be named on the patent and states that the patent applicant must provide a statement identifying the inventor and the person from whom they derive the right to be granted the patent if the applicant is not the inventor. Failure to do so will result in any application being deemed to be withdrawn.
Interestingly, the final judgment of this case was a split decision of 2:1 dismissing Dr Thaler’s appeal. Laing and Arnold LJJ, in dismissing the appeal, held that: (1) DABUS could not be considered a person and therefore could not be the inventor under section 7 of the Patents Act 1977; and (2) Dr Thaler was not entitled to apply for patents in respect of the inventions by reason of his ownership of DABUS. Therefore, they found the UKIPO to be correct in deeming Dr Thaler’s applications to be withdrawn.
All the judges found that the clear effect of section 7 of the 1977 Act is that an inventor must be a person. Birss LJ agreed that sections 7(2) and 7(3) set out an exhaustive code for determining who can be granted a patent. This was either (a) the inventor, (b) any person(s) who have entered into an agreement with the inventor to be entitled to the invention, or (c) successors in title to (a) or (b).
Consequently, it was only a person that could be granted this statutory right – and as a machine DABUS could not.
Section 13 outlines what information must be provided to the UKIPO to identify the person whom the applicant believes to be the inventor and where the applicant is not the inventor, the basis on which they should be granted the patent.
Laing and Arnold LJJ found that Dr. Thaler did not comply with section 13 of the 1977 Act. They stated that he did not identify the person whom he believes is the inventor and he also positively asserted in the alternative that the inventor is not a person and therefore had drawn attention to the fact that the application could not comply with section 7. They argued that a machine had no statutory rights as it was not a person, it had no legal personality, and could not be an inventor. The application did not, therefore, comply with section 13, and in the words of Arnold LJ “the inevitable consequence” was that the applications were deemed to be withdrawn.
Birss LJ disagreed; he considered that Dr. Thaler had complied with his obligations under section 13(2) as he honestly believed that DABUS was the inventor and had indicated the derivation of his right to be granted a patent under section 13(2)(b). Birss LJ also stated it was not part of the Comptroller’s functions to deem applications as withdrawn because an applicant’s statement does not identify any person as the inventor.
It is notable that in the introduction to his judgment, Birss LJ comments that the case appears to be about artificial intelligence and whether AI-based machines can make patentable inventions, but in fact primarily relates to the correct way to process patent applications through the Patent Office.
As to the more fundamental question of whether inventions made by AI should be patentable, the UK government published its National AI Strategy in September 2021 (entirely unrelated to this case) which sets out its ten-year plan to make the UK a ‘global AI superpower’. This follows a government consultation which called for views on artificial intelligence and intellectual property, the outcome of which was published in March 2021.
The National AI Strategy stated that a key action to be taken would be a consultation by the UKIPO which focused on patents for AI devised inventions, among other areas of IP, with the objective of supporting innovation. This consultation closed on 7 January 2022 and the responses are now under review. The information obtained from the consultation will inform any changes the government makes to legislation.
Clearly, any movement in the UK’s approach to protection of AI devised inventions and those which do not meet the criteria currently set out in the Patents Act 1977 would require amendment to the legislation. It was expressly noted by Laing LJ in the Court of Appeal judgment that the current legislation would need to change to enable cases like Thaler to be decided differently.
It is common ground that the legal framework for the grant of patents in the UK was drafted prior to significant technical advancements which may now call into question its suitability. It does therefore appear to be an appropriate time for Parliament to consider whether legislative change is appropriate; unless such a change is made the position on AI inventions will presumably remain as decided in this case. If the UK government does intend the UK to be a global ‘AI superpower’, this issue will need further thought. We will keep you updated.