EPO and UK Court of Appeal confirms AI cannot be named as inventor on patent applications

Update: 21 December 2021

In an update to the September 2021 Court of Appeal decision featured below, the Legal Board of Appeal of the European Patent Office (EPO) has, in oral proceedings held yesterday, confirmed that an inventor on patent applications must be a human being, thus dismissing appeals that an AI should be recognised as an inventor. We await the board’s written decision and reasons, which we will cover once they become available.


In a September 2021 judgment, the Court of Appeal has upheld that, within the current legal framework in the UK, an artificial intelligence (AI) machine cannot be named as the inventor in relation to a patent application for an invention which it created. The full decision is available here: Thaler v Comptroller General of Patents Trade Marks And Designs [2021] EWCA Civ 1374.

Dr Thaler applied for two UK patents in respect of inventions which he claims were created by his AI machine known as DABUS (‘Device for the autonomous bootstrapping of unified sentience’). The applications were considered withdrawn by the UK Intellectual Property Office (UKIPO) by failure to identify the inventor and how Dr Thaler derived the right to be granted a patent from the inventor in accordance with section 13 of the Patents Act 1977. Dr Thaler claimed that DABUS was the inventor and that he derived the right to be granted a patent as owner of DABUS. This was first appealed to the High Court in 2020, but was dismissed, and in turn was appealed to the Court of Appeal and came before experienced patent judges, Lord Justice Birss, Lord Justice Arnold, and Lady Justice Laing.

In essence, the court considered three main questions:

  1. Does DABUS qualify as an ‘inventor’ within the meaning of the Patents Act?
  2. Is Dr Thaler entitled to apply for a patent in respect of inventions made by DABUS?
  3. Was it correct that the applications were deemed withdrawn?

1. Does DABUS qualify as an ‘inventor’ within the meaning of the Patents Act?

All three judges agreed that the Patents Act makes it clear that only a person can be an ‘inventor’. The Act does not actually explicitly state this requirement, merely that the inventor is the actual deviser of the invention. Lord Justice Arnold explained that the Act nevertheless implies that the inventor must be a person, supported, for instance, by the dictionary definition of a deviser being ‘a person who devises’. Other indications can be found in the Act, such as section 13(2) which imposes a requirement on the applicant to identify the person whom they believe to be the inventor. In addition, section 13(1) states the inventor has a right to be mentioned as the inventor in a patent – and only a person can have such a right. Moreover, section 7(2) states that a patent may be granted: (a) primarily to the inventor, (b) to any person who is entitled by an agreement or rule of law, or (c) to the successor in title of either (a) or (b) (e.g. to whom the rights have been assigned), but to no other person. Because this is an exhaustive list, it seemingly follows that the inventor must be a person. Therefore, the judges were in agreement that an inventor can only be a person – and DABUS is clearly not a person.

In answer to question (1): No, because an inventor must be a person.

2. Is Dr Thaler entitled to apply for a patent in respect of inventions made by DABUS?

As set out above, section 7(2) provides that a patent can be granted to someone who is not the inventor if they are entitled by virtue of an agreement or a rule of law. Such a rule of law may include the UK legal mechanism that inventions devised by employees will broadly be owned by their employers. Dr Thaler claimed that he had derived the right to be granted a patent by rule of law as the owner of DABUS. This was seemingly based on a principle in property law, where the owner of pre-existing property owns the new property resulting from it (such as the fruit which is produced from a tree). However, Lord Justice Arnold held that this principle did not apply to intangible property such as intellectual property rights like the right to be granted a patent. An example was provided to contrast the fruit tree analogy, where, if person A took a digital photograph using person B’s camera, although person B owned the camera (the original property), person A may own copyright in the photograph and not person B (the new intangible property). Similarly, intangible property such as the right to be granted a patent for an invention resulting from an AI machine would not automatically flow to the owner of the machine. Accordingly, Lord Justice Arnold held that there is no rule of law that would enable Dr Thaler to possess the right to apply for the patent, and therefore he cannot be entitled.

In answer to question (2): Dr Thaler cannot be entitled.

3. Was it correct that the applications were deemed withdrawn?

According to Lord Justice Arnold, it logically follows that, because (i) DABUS is not a person and cannot be an inventor, and (ii) Dr Thaler was not entitled to apply for the patents, Dr Thaler had failed to identify the person whom he believed to be the inventor, and had also failed to provide an indication of how he derived the right to be granted a patent.

It is worth noting that Lord Justice Birss, also a very experienced patent judge, dissented from this judgment and found that, although DABUS was not a person so could not be an inventor, simply because Dr Thaler had filed a statement identifying whom he believed to be the inventor and indicating the derivation of his right to be granted the patent, he had satisfied the requirements necessary. He considered that it is not the function of the UKIPO to substantively examine whether the statement is correct – instead, since the statement honestly reflects Dr Thaler’s belief, it satisfies the statutory requirements. Lord Justice Birss considered that this fulfilled Dr Thaler’s obligations under section 13(2) and the applications should not have been withdrawn.

However, Lord Justice Arnold and Lady Justice Laing did not agree, finding that, although the factual accuracy of the statement does not need to be considered, the UKIPO is entitled to deem the application withdrawn if it clearly does not fulfil the statutory requirements. For example, it was a statutory requirement that the applicant identify the person who he believes to be the inventor, not merely their belief about who the inventor is. In these judges’ view, it was clear that the statements filed did not comply with the legislation because Dr Thaler did not identify a person as the inventor and did not identify a valid legal mechanism for deriving the rights. As a matter of law, and not as a matter of fact, the UKIPO can identify that the statements are defective, and that the requirements have not been met.

Accordingly, on a 2-1 majority, the Court found that the applications were correctly deemed withdrawn, and the appeal was dismissed.

In answer to question (3): the applications were correctly deemed withdrawn.

Comments

The fact that such an experienced patent judge as Lord Justice Birss would have found in favour of Dr Thaler indicates how the concept of AI inventorship is not clear-cut. It must be said that, following this judgment, it appears quite clear that, under current UK law, there is no room for an AI machine to be named as an inventor of a patent. It is worth noting that this decision referenced submissions which relied on where the law ought to be, and not where it is, and from the judges’ comments it is evident that, whether or not an AI machine should be identified as an inventor for a patent, a legislative change is required in order for AI machines to be allowed within the definition of inventor within the Act – and the judges are constrained in this decision by what the law currently is.

This judgment appears logical in that DABUS should not be an inventor because it is obviously not a person (whether a natural person, such as a human, or even a legal person for that matter, such as a corporation). As the inventor cannot have any rights, it follows that there are no rights which can be transferred to the owner of the machine, whether a legal mechanism exists or not. Furthermore, ownership of the machine appears to be a rather arbitrary mechanism to obtain rights from the machine (if such rights could exist). This would raise questions of what would happen if ownership of the machine was transferred, especially with respect to when the invention was devised by the AI machine.

If an AI machine cannot be named as inventor on a patent, in the absence of a change in legislation or at least until the time of any such change, applicants will have to determine how to apply for patents which are created by such AI. This raises the question of whether the owner of the AI could validly be named as the inventor, or whether it is the person developing or creating the AI; training the AI with data; setting the specific technical problem the AI has solved; or even identifying the inventive step of the invention created by the AI. In the UK at least, there is an argument that if the applicant identifies the person that they truly believe to be the inventor (whether that is the owner of the AI or otherwise), the requirements of section 13 are satisfied. This could only be questioned by someone who contests that they are instead entitled to the grant of the patent.

Looking forward, the UKIPO has since commenced a consultation on AI with respect to intellectual property rights. The outcome of this could well be the first step towards a solution to a problem that was likely not envisaged when Parliament decided on the wording of the Patents Act over 40 years ago.

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