In a long-running dispute centred around whether DABUS, an Artificial Intelligence(AI)-based creativity machine, can be named as an inventor of two GB patents, the UK Supreme Court finally issued the long-awaited decision. Dr Stephen Thaler, the creator and owner of DABUS has ultimately failed in his landmark bid to register two GB patent applications protecting inventions created by DABUS, specifically naming the machine as inventor. The Supreme Court has ruled that while AI machines may have the ability to generate work, these machines are not inventors within the meaning of the 1977 Act.
This appeal was brought at the Supreme Court against a decision of the UKIPO in the form of the Comptroller-General of Patents, Designs and Trademarks and related to patent applications GB 1816909.4 and GB 1818161.0 in the name of Dr Stephen Thaler.
The appeal concerned two applications made under the Patents Act 1977 (“the 1977 Act”) for the grant of patents for products and processes which are said to be novel and inventive. A first unusual feature of the applications is that any inventions they disclose and describe are said to have been generated by a machine acting autonomously and powered by artificial intelligence (“AI”). A second is that the appellant, Dr Stephen Thaler, maintains that he is entitled to make and pursue the applications on the basis that he is the owner of that machine.
Background of this case
On 17th October 2018 and 7th November 2018, two patent applications GB18116909.4 and GB1818161.0 were filed respectively by Dr Thaler. The first is entitled "Food Container" and concerns the shape of parts of packaging for food. The second is entitled "Devices and Methods for Attracting Enhanced Attention", and is a form of flashing light.
In the original application form, in the section for the Family Name of the Inventor, the name "DABUS", which is the name of Dr Thaler's AI machine was provided. Dr Thaler had expressly indicated the creativity machine 'DABUS'" as the inventor, explaining that the invention was generated by DABUS.
Dr Thaler is the owner of DABUS and its creator and was the person who set it up to run to produce the inventions in issue.
In a hearing before Mr Jones that took place on 14th November 2019, a decision was reached against Dr Thaler, as follows:
"I have found that DABUS is not a person as envisaged by sections 7 and 13 of the Act and so cannot be considered an inventor. However, even if I am wrong on this point, the applicant is still not entitled to apply for a patent simply by virtue of ownership of DABUS, because a satisfactory derivation of right has not been provided. The applications shall be taken to be withdrawn at the expiry of the sixteen-month period specified by rule 10(3)."
Accordingly, the failure of the patent applications was on two grounds: DABUS was not a person and so cannot be the inventor and so the procedural step of naming the inventor was not complied with, separately, Dr Thaler was not entitled to apply for the patents.
Dr Thaler subsequently appealed this refusal to the High Court, where his appeal was dismissed by Marcus Smith J (] EWHC 2412 (Pat)). The judgment of the High Court upheld the decision on both grounds.
The appeal was dismissed for three reasons. First that DABUS could not be an inventor because it was not a natural person, second that Dr Thaler had not established a right to be granted the patent since he did not request this nor is DABUS able to transfer the rights to him, and third that the Deputy Director had been correct to find that the applications were deemed withdrawn under s13.
A further appeal by Dr Thaler to the Court of Appeal was dismissed on 21 September 2021 ( EWCA Civ 1374,  Bus LR 375). 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
Judgement of the Supreme Court on appeal from the Court of Appeal
In the latest appeal, Dr Thaler’s legal team focused their arguments on the following key points:
- Dr Thaler is entitled to apply for and secure the grant of patents for inventions created by DABUS and, more generally, that the owner of a machine which embodies an AI system is entitled to inventions created or generated by the machine, and to apply for and secure the grant of patents for those inventions if they meet the other statutory requirements for patentability set out in the 1977 Act;
- an applicant for such a patent is not required to name a natural person as an inventor to meet the requirements of the 1977 Act;
- Dr Thaler has satisfied the provisions of section 13(2) of the 1977 Act; and
- in any event the Comptroller had no proper basis under the Act for refusing these applications in the manner and for the reasons he did.
Lord Kitchin (with whom Lord Hodge, Lord Hamblen, Lord Leggatt and Lord Richards agree):
Taking the prosecution history of this case into consideration, Lord Kitchin concluded that the basis on which the appeal must be decided turns on three issues, being:
- The scope and meaning of “inventor” in the 1977 Act;
- 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?; and
- Was the Hearing Officer entitled to hold that the applications would be taken to be withdrawn?
With regard to the first issue, Lord Kitchin is in agreement with the Comptroller’s position. He is of the opinion that only one interpretation is permissible based on 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, that is that 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. Lord Kitchin opined that DABUS is clearly a machine and not a person be it natural or legal that devised any relevant invention. It was concluded that DABUS is not and never was an “inventor” for the purposes of section 7 or 13 of the 1977 Act.
With regard to the second issue, Lord Kitchin concluded that, based on the factual assumptions upon which the appeal is proceeding, Dr Thaler has never had any right to secure the grant to himself of patents under the 1977 Act in respect of anything described in the applications. Two key issues weighed heavily on this decision. Firstly, based on the above conclusions to the first issue, DABUS is a machine with no legal personality. As such is not and has never been an inventor within the meaning of the 1977 Act. Secondly, Dr Thaler, on his own case, has no independent right to obtain a patent in respect of any such technical advance. Taking into consideration the structure and content of sections 7 and 39 of the Act, on their own and in the context of the Act as a whole, Lord Kitchin was not convinced by Dr Thaler’s argument 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.
With regard to the third issue, Lord Kitchin is of the view that in view of the terms of section 13, it is no part of the function of the Comptroller to examine the correctness of genuine and plausible statements of inventorship and entitlement under section 13(2) and rule 10.
However, section 13 contains several requirements of relevance to this case and in Lord Kitchin’s view, Dr Thaler has not satisfied any of them. With regard to section 13(2)(a), Dr Thaler failed to identify any person or persons whom he believed to be the inventor or inventors of the inventions described in each of the applications. Dr Thaler has instead chosen to proceed on the basis that the inventions were made by DABUS powered by AI and acting autonomously; and that it is in principle permissible to apply for and secure the grant of a patent for an invention made by DABUS, and that he, as the owner of the machine, is entitled to the grant of the patent.
With regard to section 13(2)(b), Dr Thaler also failed to indicate the derivation of his right to be granted the patent. Dr Thaler’s reliance on the fact that DABUS was the inventor meant that it was not possible for the machine to transfer rights to him.
For all the above reasons, Lord Kitchin concluded that 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, and that the appeal should be dismissed.
Dr Thaler has ultimately failed in his landmark bid to register two GB patent applications protecting inventions created by DABUS, an AI-based creativity machine he owns, specifically naming the machine as inventor.
It seems clear from Dr Thaler’s consistent actions that this case was intended to be used as a test litigation to challenge the limits of the law in relation to the up and coming technical field of Artificial Intelligence. As noted by Birss LJ, “There is more than a hint in this case of the idea that if only Dr Thaler was not such an obsessive and, instead of calling DABUS the inventor, he named himself and then none of these problems would arise. However, since inventors can waive their right to be mentioned under s24(3), even if the Comptroller suspects that Dr Thaler is really the inventor, Dr Thaler has clearly waived whatever right he may have had to be mentioned and that should be the end of that.”
It would appear that majority of Dr Thaler’s submissions in relation to entitlement were hinged on the assumption that DABUS can itself be an inventor within the meaning of the 1977 Act. Once the court came to the conclusion that DABUS was a machine and not a person, his submissions became fundamentally flawed and had no legs to stand on.
It was also clear that the terms of sections 7 and 13 of the Act left room for interpretation as to the role and responsibilities of the Comptroller in relation to ascertaining the validity of the inventor.
It remains to be seen how the law governing the protection of intellectual property in the field of AI will evolve to address the issue raised by Dr Thaler. For now, it is at least clear that while machines may have the ability to generate work, these machines are not inventors within the meaning of the 1977 Act. They are not entitled to the works they generate. This situation results in a lacuna in the ownership, and thus protection and exploitation, of technological innovations generated by a machine. This may be a disincentive to investment in such machines approve a barrier to the development of AI technologies. It is to be hoped that a resolution of the difficulties highlighted by this case they be achieved soon.