Human Says No: AI Can’t Be Patent Inventor, Rules High Court Judge

In the latest instalment of the DABUS saga, the UK High Court has dismissed an appeal against the decision of the UK Intellectual Property Office (‘UKIPO’) rejecting the naming of an AI system as inventor on two patent applications.

Monday’s judgment was made on the basis that DABUS “is not, and cannot be, an inventor within the meaning of the [Patents Act 1977], simply because DABUS is not a person”.

The applicant is also appealing the parallel decision of the European Patent Office (‘EPO’) reported here , and has issued proceedings against the United States Patent and Trademark Office (‘USPTO’) over its decision to reject two corresponding US patent applications.

Interestingly, the World Intellectual Property Organisation (‘WIPO’) published a PCT in April of this year which names DABUS as the inventor of both inventions and notes that “the invention was autonomously generated by an artificial intelligence”. This may be the first published patent application to name an AI as the inventor – and with AI inventorship a key focus of the UKIPO’s call for views on AI and IP, it seems the DABUS story is far from over.

Background to the appeal

In late 2018 Dr. Stephen Thaler filed two GB patent applications, GB1816909.4 and GB1818161.0, for a food container and a search and rescue beacon, in his own name, but stated that he was not an inventor of either invention.

The UKIPO requested Dr Thaler to file a statement of inventorship and of right to grant a patent for both applications. Dr Thaler duly filed these statements, asserting that the inventor was an AI machine known as DABUS, and that Dr Thaler had acquired the right to grant of the patents by “ownership of the creativity machine DABUS”.

His arguments, which formed the substance of the current appeal, were as follows:

1. Inventorship was not confined to natural persons: a non-natural person, or non-person, could be the “inventor” of an invention.
2. He did not contend that DABUS had any legal personality – although he was seeking an extremely wide definition of “inventor”, he was not seeking to change the conventional limits of legal personhood.
3. If it were possible for a non-person to be an inventor, but not the applicant nor owner of a patent, then that non-person would not be able to transfer such rights to another. Dr Thaler’s proposed solution to this problem was that the rights to an invention of a non-person inventor should vest in the owner of the inventor.

At a subsequent oral hearing, the UKIPO decided that because DABUS was a machine, it could not be regarded as an inventor for the purposes of the Patents Act 1977: a natural person must be identified as the inventor. Further, as DABUS was not an inventor, it could own nothing capable of being transferred, and so Dr Thaler had not acquired the rights in the patent, whether by virtue of ownership of DABUS or otherwise.

As such, the UKIPO decided that the patent applications should be taken to be withdrawn.

The current appeal

Dr Thaler sought to appeal the UKIPO’s decision on the grounds that the Comptroller’s representative had prejudged the outcome, had misdirected himself in his approach to construing the relevant legislation, and had used section 13 of the Patents Act 1977 (“Mention of Inventor”) as an illegitimate means of denying Dr Thaler his rights.

In his decision, Marcus Smith J dismissed the first two grounds as unfounded, and re-considered Dr Thaler’s substantive submissions in relation to the third ground in light of the more appropriate section 7 of the Patents Act 1977 (“Right to apply for and obtain a patent”).

Marcus Smith J considered the three classes of persons to whom, under section 7(2)(a), (b), and (c), a patent may be granted:

(2) A patent for an invention may be granted –

(a) primarily to the inventor or joint inventors;

(b) in preference to the foregoing, to any person or persons who, by virtue of any enactment or rule of law, or any foreign law or treaty or international convention, or by virtue of an enforceable term of any agreement entered into with the inventor before the making of the invention, was or were at the time of the making of the invention entitled to the whole of the property in it (other than equitable interests) in the United Kingdom;

(c) in any event, to the successor or successors in title of any person or persons mentioned in paragraph (a) or (b) above or any person so mentioned and the successor or successors in title of another person so mentioned;

In summary, the judge found that:

• The concluding words of section 7(2) indicated that there were only three classes to whom a patent may be granted, and classes (b) and (c) were derivative and arose only by transfer from the inventors in class (a).
• It was possible to construe section 7 in such a way that the term “inventor” extended to both persons and non-persons, but only persons fell within the classes in section 7(2). In other words, regardless of the meaning of “inventor”, a patent could only be granted to a person, in view of the established principle that only a person can hold property rights.
• Neither Dr Thaler nor DABUS fell within class (a) because Dr Thaler was a person but not the inventor, and DABUS was the (assumed) inventor but not a person.
• In any event, reading “inventor” as extending to non-persons was an “unlikely” construction of the relevant provision, in view of section 7(3) of the Patents Act 1977 which defines “inventor” as “the actual deviser of the invention”, and Lord Hoffman’s reference in Yeda [2007] UKHL 43 to the inventor as the natural person who came up with the inventive concept. Further, the requirement that any “invention” feature an inventive step (being something “not obvious to a person skilled in the art”) led inevitably to restricting the term “inventor” to a natural person.
• Therefore, DABUS “is not, and cannot be, an inventor within the meaning of the 1977 Act, simply because DABUS is not a person”. That was not to say that it had not “invented” the inventions subject to the application – but it could not be the inventor as meant by the 1977 Act.
• Similarly, because DABUS is not a person, it “cannot even hold property, let alone transfer it”, so there could be no transfer of rights to bring Dr Thaler inside classes (b) or (c).

On the question of ownership, Dr Thaler had argued that “if you own the machine, you own the output of that machine”, relying on parallels with copyright law. The judge noted, however, that no such rules have been framed in the context of patents, and it was “impossible to say that simply because (i) DABUS has invented something and (ii) Dr Thaler owns DABUS, Dr Thaler is entitled to the grant of a patent. There must either be an application by the inventor within section 7(2)(a) (which cannot be made because DABUS is not an inventor nor a person) or the inventor must have transferred the right to apply enabling Dr Thaler to apply under one of section 7(2)(b) or (c) (which again cannot be in this case).”

The argument that Dr Thaler was the inventor under class (a) by virtue of his ownership of DABUS, was positively not advanced by him, “not merely because he considered it bad in law, but more importantly because (in moral terms) he considered that he would illegitimately be taking credit for an invention that was not his”. It was therefore not considered in the case, although the judge did make clear that he “in no way” regarded “the argument that the owner/controller of an artificially intelligent machine is the “actual deviser of the invention” as an improper one”.

It therefore remains to be seen whether such an approach would be accepted by patent offices, but both parties to the appeal agreed that work is needed to address the way in which patent systems will handle inventions created by AI. This case suggests that this needs to be done at the legislative level, however: the IPO’s submissions were that changes should not be shoehorned into existing legislation through judicial interpretation, and while the Judge did not go as far as to endorse these comments, he did decline to find in favour of Thaler’s appeal, leaving the invention unprotected by patent law.

Case: Thaler v The Comptroller-General of Patents, Designs and Trade Marks [2020] EWHC 2412 (Pat)

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