Stephen Thaler v Comptroller-General of Patents, Designs and Trade Marks

Stephen Thaler v. Comptroller-General of Patents, Designs and Trade Marks

2023, UKSC 49

Decided on 20^th December 2023

Background of this case

On October 17th, 2018 and November 7th, 2018, Dr. Thaler filed two patent applications - GB18116909.4 and GB1818161.0. The first application, titled "Food Container," pertains to the shape of food packaging components. The second application, titled "Devices and Methods for Attracting Enhanced Attention," involves a form of flashing light.

In the section for the Family Name of the Inventor, Dr. Thaler provided the name "DABUS," which is the name of his AI machine. Dr. Thaler claimed that the creativity machine 'DABUS' was the inventor, as it generated the inventions in question. Dr. Thaler owns and created DABUS to develop the inventions.

A hearing took place on November 14th, 2019, and a decision was made against Dr. Thaler. The decision stated that DABUS is not a person as envisaged by sections 7 and 13 of the 1977 Act and, therefore, cannot be considered an inventor. Even if DABUS were considered an inventor, Dr. Thaler would not be entitled to apply for a patent simply because he owns DABUS. The applications were deemed withdrawn at the expiry of the sixteen-month period specified by rule 10(3).

Dr. Thaler appealed this decision to the High Court, where his appeal was dismissed by Marcus Smith J ([2020]] EWHC 2412 (Pat)). The judgment of the High Court upheld the decision on both grounds.

There were three reasons for dismissing the appeal. Firstly, DABUS could not be an inventor because it was not a natural person. Secondly, Dr. Thaler had not established a right to be granted the patent since he did not request it, nor was DABUS able to transfer the rights to him. Lastly, the Deputy Director had been correct to find that the applications were deemed withdrawn under section 13.

Dr. Thaler further appealed to the Court of Appeal, but it was dismissed on September 21st, 2021 ([2021] EWCA Civ 1374, [2022] Bus LR 375). The 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 an inventor is required to be a person. 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. 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. Furthermore, he had not 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

During the latest appeal, Dr Thaler's legal team presented several key arguments. They argued that Dr Thaler is entitled to apply for and secure patents for inventions created by the AI system, DABUS. Furthermore, the team argued that the owner of a machine that embodies an AI system should also be entitled to inventions created or generated by the machine, and to apply for and secure patents for those inventions if they meet the other statutory requirements for patentability set out in the 1977 Act. Additionally, they argued that an applicant for such a patent is not required to name a natural person as an inventor to fulfil the requirements of the 1977 Act. Lastly, they argued that Dr Thaler has satisfied the provisions of section 13(2) of the 1977 Act.

Lord Kitchin, along with Lord Hodge, Lord Hamblen, Lord Leggatt, and Lord Richards, considered the prosecution history of this case and concluded that the appeal must be decided on three issues. The first issue was the scope and meaning of "inventor" in the 1977 Act. Lord Kitchin agreed with the Comptroller's position that an inventor, according to the 1977 Act, must be a natural person, and DABUS is a machine that created the technical advances disclosed in the applications on its own. Therefore, DABUS is not an inventor for the purposes of section 7 or 13 of the 1977 Act.

The second issue was whether Dr Thaler was the rightful owner of the invention. Lord Kitchin concluded that, based on the factual assumptions of this appeal, Dr Thaler had no right to secure the patents under the 1977 Act in respect of anything described in the applications. He explained that DABUS was a machine with no legal personality and had never been an inventor according to the 1977 Act. Moreover, Dr Thaler had no independent right to obtain a patent in respect of any technical advance.

The third issue was whether the Hearing Officer was entitled to hold that the applications would be taken to be withdrawn. Lord Kitchin stated that the terms of section 13 indicate that it is not part of the Comptroller's function to examine the correctness of genuine and plausible statements of inventorship and entitlement under section 13(2) and rule 10. However, Dr Thaler failed to satisfy any of the requirements of section 13, including the identification of any person whom he believed to be the inventor of the inventions described in each of the applications. Furthermore, he did not indicate the derivation of his right to be granted the patent.

For these reasons, Lord Kitchin concluded that the appeal should be dismissed, and the judge and the majority of the Court of Appeal made no error in affirming the decision that the applications are now deemed to have been withdrawn.

Conclusion

Dr Thaler failed in his attempt to register two GB patent applications naming DABUS, an AI-based machine, as the inventor. The court ruled that machines are not inventors within the meaning of the 1977 Act. This raises a challenge for the protection of intellectual property in the field of AI as it results in a gap in ownership and protection of technological innovations generated by machines. It remains to be seen how the law will evolve to address this issue.