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Capturing the attention of both legal experts and technology enthusiasts alike, the UK Supreme Court handed down its highly anticipated decision in the case of Thaler (Appellant) v Comptroller-General of Patents, Designs and Trademarks (Respondent) on 20 December. In a unanimous decision, the UK Supreme Court dismissed Dr Thaler’s appeal which relates to two inventions that Dr Thaler repeatedly stated were not devised by a human inventor but by an AI machine known as DABUS.
The history of the case will be well-known to interested parties. Two patent applications that had named AI machine DABUS as a sole inventor were deemed withdrawn by the UKIPO. The attempt to identify the DABUS machine as the inventor in the applications was rejected on the grounds that DABUS is not a person pursuant to section 13(2) of the Patents Act 1977. Dr Thaler appealed this decision and the appeals were dismissed in the UK High Court and the Court of Appeal as reported here. Dr Thaler then appealed to the Supreme Court. The Supreme Court dismissed the appeal on 20 December, confirming the correctness of the decision to treat the applications as withdrawn.
The Supreme Court Judgement
Importantly, it was noted this appeal does not deal with the broader question of whether inventions generated by AI machines should be patentable. Instead, the decision is based on the interpretation and application of the current provisions of the Patents Act 1977.
The outcome deals with three issues:
The scope and meaning of the term “inventor” in the 1997 Act
The court held that an inventor within the meaning of the 1977 Act must be a natural person. DABUS is not an inventor and never was an inventor.
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?
This issue was rejected. The right to apply for and obtain a patent requires existence and identification of an inventor. An inventor, as defined by the Act, must be a person. DABUS was indicated as a sole inventor and is not a person such that the inventor requirement is not met. Additionally, Dr Thaler as an applicant (and not inventor) is not entitled to be granted a patent according to section 7(2)(b) or section 7(2)(c), as DABUS is not a person.
Dr Thaler submitted that, based on the 1977 Act recognising that there is property in an invention at the time it is made and that he is the owner of DABUS, he should be entitled to apply for and be granted patents for the applications, applying the doctrine of accession.
This submission was rejected based on the following:
DABUS cannot be and is not an inventor.
An invention is not tangible property such that title to the invention can be passed to the owner of a machine that generated the invention.
There is no basis for applying the doctrine of accession in these circumstances.
Was the Hearing Officer entitled to hold that the applications would be taken to be withdrawn?
Yes, because Dr Thaler did not identify any person/persons as the inventor/inventors of the inventions described in the applications and his ownership of DABUS does not provide basis for being entitled to the grant of patents for the applications.
As noted in the judgement, this decision was based on the interpretation and application of the provisions of the Patents Act 1977 and does not deal with the broader question of whether inventions generated by AI machines should be patentable. As such, we should not assume that Dr Thaler’s difficulties obtaining patent protection imply that the courts will take a negative view of inventions made by humans using AI tools. Furthermore, this judgement does not give guidance on the range of human activities that will be accepted for a person to be considered “the actual deviser of the invention” as required by section 7(3) of the UK Patents Act. Nevertheless, UK law and patent office practice provides a framework for successful patenting for a great many inventions that exploit the capabilities of AI. It will be interesting to see how these questions are considered in future and whether this leads to legislative change.
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