UK Court of Appeal dismisses DABUS appeal on AI as patent inventor but dissenting judgment leaves room for possible Supreme Court appeal

The latest round in the Thaler/DABUS patent applications story has been fought and lost by Dr Thaler in the UK Court of Appeal, although with one dissenting judgment. An appeal to the Supreme Court is possible but the subsequent announcement of the UK Government's National AI Strategy which will include a UK IPO consultation on the use of copyright and patents to protect AI, expected to be launched within the next few months may mean that the issues could be resolved via legislation instead. Where will Dr Thaler/DABUS go from here?

The Court of Appeal's decision and now the launch of the UK's National AI Strategy

On 21 September 2021, the Court of Appeal dismissed Dr Thaler's appeal from the High Court's dismissal of his appeal from the Comptroller of Patents in relation to a patent application for which the inventor was an AI (DABUS), and which the Comptroller had dismissed when Dr Thaler provided a statement of inventorship identifying an AI as the inventor.

However this dismissal was by a majority, with Lord Justice Birss delivering a dissenting judgment. Birss LJ in fact agreed with the majority of Lords Justices that, under the Patents Act 1977, the term "inventor" meant a natural person and could not include an AI. However, he disagreed over the correct course of action the Comptroller should take on receipt of a statement of inventorship which identified a non-human as an inventor, and held that the application should have been allowed to proceed to examination, and, if valid, to grant, subject to any challenges by third parties.

See a more detailed discussion of the Court of Appeal's decision below.

This dissenting judgment may encourage an appeal to the Supreme Court by Dr Thaler, who has had some success in other jurisdictions in which he has brought similar applications, most notably in Australia (see our blog post here).

While such an appeal would allow Dr Thaler to continue to test the courts' interpretation of existing legislation, this may be overtaken by a further UK Government consultation. The day after the Court of Appeal's judgment was handed down, the UK Government published its National AI Strategy, billed as "A new ten-year plan to make the UK a global AI superpower".  As part of this AI "push", the UK IPO will be launching a consultation on the use of copyright and patent law to protect AI within the next three months. This may therefore provide a legislative solution to this debate.

Where does DABUS go from here?

It was noted in the Court of Appeal's judgments that Dr Thaler could have had more success if he had simply listed himself as the inventor. He has not done so either in this jurisdiction nor in any of the others in which he has filed applications, suggesting an intention to test the question of whether an AI can be an inventor, rather than simply to procure patent rights. So far, he has had several setbacks, being rejected before the EPO as well as the USPTO, along with the IPO, but he also some successes: South Africa allowed his application, although there is no substantive pre-grant examination in that jurisdiction, and the Federal Court of Australia decided the question in Dr Thaler's favour, holding that DABUS could be named as the inventor and that Dr Thaler was entitled to seek grant of the relevant Australian patent (see our blog post here).

In the UK, Dr Thaler's legal team have indicated that they consider that Birss LJ has correctly summarised the law. Whether or not this is a first step on the road to a Supreme Court challenge remains to be seen – certainly Birss LJ's dissenting judgment may have opened up a possible route to being given permission to appeal. There seems to be an arguable point of law, although given that the point in contention is limited to Patent Office practice, as opposed to the wider question of AI inventorship, Dr Thaler's team may still need to demonstrate to the Supreme Court that this is a matter of high public interest.

Laing LJ noted that, absent a statutory deeming provision, it was simply not possible for DABUS to be an inventor under the UK Patents Act. The opening for Dr Thaler lies not in that question, which all the Lords Justices agreed was not possible, but rather what the Comptroller should do with an application which in any event (wrongly) names an AI as an inventor.

Ultimately, this does not seem a hugely satisfactory way for this question to be resolved. One might therefore expect that, ultimately, the answer will come from legislation. The UK IPO's summary of its "call for views" on the question of AI and IPR noted a range of possibilities in terms of how to treat AI-generated inventions, and in its response (see our blog post here), the Government proposed, inter alia, a further consultation on this question, something will now form part of the new AI National Strategy. Interested actors will be watching the progress of these consultations closely and whether they result in proposed legislative change.

Background

Dr Thaler had filed two patent applications, one for the shape of parts of packaging for food, and one for a form of flashing light. He had indicated that he was not the inventor for either patent, and so the IPO had informed him that he needed to file a statement of inventorship under s13(2) of the Patents Act within 16 months.

He did so, filing a statements saying that DABUS (the AI) was the inventor of the invention, and that he derived right to be granted the patent "by ownership of the creativity machine "DABUS". In fact, Dr Thaler was also the creator of DABUS and the person who set it up to produce the inventions in issue.

There followed a hearing before the Comptroller, which held that DABUS was not a person as envisaged by sections 7 and 13 of the Patents Act and therefore could not be the inventor, and further, that Dr Thaler was not a person entitled to apply for the patents as he had not shown a satisfactory derivation of right from the inventor. The applications were therefore taken to be withdrawn at the end of the 16 month period given for Dr Thaler to provide a statement of inventorship.

Dr Thaler appealed this decision to the High Court, at which his appeal was dismissed (see our blog post on this decision here). He then appealed to the Court of Appeal.

Relevant Law

Section 13(2) Patents Act 1977 requires the applicant to file a statement within a prescribed time (if the applicant didn’t give the information on filing): (a) "identifying the person or persons whom he believes to be the inventor or inventors" and, (b) where the applicant(s) are not also the only inventor(s), a statement indicating the derivation of the applicant's right to be granted the patent.

If the applicant fails to do so, the application is deemed withdrawn.

Section 7(2) of the Patents Act states that a patent may be granted to: (a) the inventors or joint inventors; (b) a person or persons who, by law, treaty or convention, or enforceable agreement with the inventor, was or were at the time of the making of the invention entitled to the whole of the property in it; or (c) any successor in title to any such persons; and to no other person.

Section 7(4) of the Patents Act states that, except so far as the contrary is established, the person(s) who make(s) an application for a patent shall be taken to the be the person(s) entitled under section 7(2) to the grant of the patent.

The Court of Appeal's findings

The Court of Appeal was unanimous in finding that under the Patents Act, inventors must be human beings – the person who devises the invention. This means that, regardless of whether a machine creates a patentable invention, it has no right under the Patents Act to be named as an inventor, nor to file an application as a patentee, nor to seek employee's compensation.

The dissention between the Lords Justices was over:

• what the Comptroller should do in the event of a statement of inventorship which on its face identifies someone other than a human as an inventor; and
• what it should do when there is a question-mark over a non-inventor applicant's derivation of right to the grant of a patent.

Birss LJ's dissenting judgment: In this regard, Birss LJ characterised the case as being not one concerned with the "glamour" of whether or not AI machines could make patentable inventions, but rather "the correct way to process patent applications through the Patent Office" and…"an object lesson in the risks of advocacy being distracted by glamour".

In his dissenting judgment, Birss LJ reviewed the legislative history of the relevant sections of the Patents Act and their predecessors, noting that the Comptroller was not, in granting a patent, ratifying the applicant's right to the patent, that the applicant was only required to state whom they believed the inventor to be (the relevance of the identification of the inventor being only so they could be mentioned in the published patent if identified), and further, that arguments about the entitlement to the grant of patents were to be resolved by a separate procedure and only at the suit of a person disputing ownership of the patent.

In applying these principles, Birss LJ held that Dr Thaler had complied with his obligations under s.13(2) of the Patents Act to name whom he believed the inventor to be. His statement did not identify any such person within the meaning of the Patents Act because, in his honest belief, there was no human inventor. There was no indication was he was not being honest or was hiding the true inventor. The Comptroller had therefore been wrong to find Dr Thaler's statement of inventorship invalid and treat the applications as withdrawn. The fact that no inventor, properly called, could be identified simply meant that the Comptroller had no name to mention on the patent.  Just because all inventors were people, it did not mean that all inventions have a person who invented them, and the absence of a proper name (when it was clear why no name had been given and there was no indication the applicant was not giving their genuine belief), was not in and of itself justification for finding s.13(2) to have been not complied with.

In respect of the s.13(2)(b) obligation to show a derivation of a right to grant of the patent, Birss LJ held that Dr Thaler had complied with his obligation to indicate the derivation of his right to be granted the patent. He had indicated that it relied on his owning and operating DABUS and contended that there was a rule of law whereby the owner and operator of a machine which created an invention was entitled to be granted a patent for it.  In Birss LJ's judgment, it was not for the Comptroller to evaluate whether such a rule of law existed once a s.13 statement had been provided and indeed he did not provide judgment either way, holding that it was irrelevant.

Instead, Birss LJ held that the Comptroller's power to determine who had the right to the grant of a patent was only engaged on the application of a person who claimed to be so entitled instead; either under section 8 of the Patents Act (pre-grant) or s37 of the Patents Act (post-grant).  He held that, in this case, by determining that Dr Thaler was not entitled to the grant of the patent, the Comptroller had exercised the s.8 jurisdiction without such an application by another person having been made.

Birss LJ therefore held that it was wrong for the Comptroller to have deemed the applications withdrawn.

It is worth noting that both s.8 and s.37 require a person with a better claim to the grant of the patent to come forward, with the Comptroller then tasked with determining whether the application (or granted patent) should be in their name instead of, or alongside, the applicant (or owner). Birss LJ noted that a consequence of his judgment was that, even if Dr Thaler was not the right person to be granted the patents (for example if there was no such rule of law that allowed him to claim grant of the patents as owner/operator of DABUS), this may go unchallenged because there was not obviously any person with a better claim so as to bring a s.8 / s.37 challenge. But this was, in Birss LJ's view, "a consequence…deliberately built into the scheme of the 1977 Act for policy reasons".

The Majority verdict: Arnold LJ and Laing LJ disagreed with Birss LJ, holding that the Hearing Officer and the Judge in the first instance case were correct to hold that both applications were deemed to have been withdrawn due to a failure to provide a proper named  inventor and a failure to demonstrate a right to the grant of a patent.

Both accepted the premise that the Comptroller was not required or entitled to investigate or ratify the factual correctness of the answers given by an applicant in its s13(2) statement of inventorship or to determine whether they are well founded.

However, they held that the Comptroller was entitled to examine the statement on its face. In Arnold LJ's judgment (with which Laing LJ agreed), the function of the Comptroller under s13(2) was to check that a statement had been filed in time, and whether it appeared to comply with the statutory requirements or was defective on its face.

In this case, Dr Thaler had filed a statement which deliberately identified a non-person as the inventor. This may have been his genuine belief, and it may have been factually accurate, but it was a legal impossibility. The Comptroller, in rejecting the statement, was not determining its factual accuracy; the Comptroller took the statement on its face, and found it to be defective.

Further, Arnold LJ held that Dr Thaler did not identify the derivation of his right to be granted the patents. He had simply asserted that it was sufficient that he owned DABUS. This was, as a matter of law, incorrect, and in concluding so, the Comptroller was again not determining the factual accuracy of his statement; the Comptroller took it on its face and rejected it as being not a legal mechanism by which Dr Thaler could claim ownership.

It followed that Dr Thaler had not complied with s.13(2) in his statement of inventorship forms, and therefore the applications were deemed withdrawn.

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