On 03 January 2024, the Supreme Court of the UK ruled on Thaler v Comptroller-General of Patents, Designs and TradeMarks [2023] UKSC 29 (20 December 2023) that an “invention” for the purposes of the UK Patents Act 1977 must have a human inventor. A patent application not identifying a human person as the inventor must be withdrawn.

Background 

In 2018, Dr Stephen Thaler filed patent applications for two inventions. The statements of inventorship reported Dr Thaler’s belief that each of the inventions was created by the AI of a machine called DABUS and that Dr Thaler had acquired the right over the patents because of his ownership of that machine.

The UK Intellectual Property Office (IPO) withdrew the applications arguing that DABUS was not a person, and so it could not be considered an inventor under section 7 of the UK Patents Act 1977. Given that DABUS had no rights that could be transferred, nor power to transfer anything that it might have owned, Dr Thaler was not entitled to a patent over the product created by DABUS under section 13 of the 1977 Act. 

The issues

The Supreme Court determined three issues:

1. The scope and meaning of “inventor” under the Patents Act.

2. Whether Dr Thaler was nevertheless the owner of any invention made by DABUS, and entitled to apply for a patent in respect of it.

3. Whether the Hearing Officer was entitled to withdraw the applications.

I now present each assessment in turn.

1) The scope and meaning of “inventor” under the Patents Act.

The Court referred to section 7(3) of the Act, which defines “inventor” as the “actual deviser of the invention”. Lord Kitchin concluded that the ordinary meaning of this was of a person, which, in his view, was also consistent with other provisions of the Act.

Therefore, the Comptroller was right to decide that DABUS is not a person, let alone a natural person and it did not devise any relevant invention. Accordingly, it was not an “inventor” for the purposes of section 7 or 13 of the 1977 Act. 

2) Was Dr. Thaler the owner of any invention made by DABUS, and entitled to apply for a patent in respect of it?

Dr Thaler contented that, as the owner of DABUS and by analogy with or upon application of the doctrine of accession, he derived the right to apply for and be granted patents for the inventions. 

The doctrine of accession concerns new tangible property produced by existing tangible property. For example, if a farmer owns a cow, he will also own the calf. By analogy, Dr Thaler argued that, as owner of DABUS, he was the owner of all rights in all developments made by DABUS. 

However, the Court concluded that the doctrine was not applicable because, in the present case, there was not a new item of tangible property produced by an existing item of tangible property.

3) Was the Hearing Officer entitled to hold that the applications would be taken to be withdrawn?

In light of the previous reasoning, the Court concluded that The Controller was right to withdraw the application. 

Although the Comptroller has the power to intervene where the indication provided was obviously defective or insufficient, Dr Thaler failed to satisfy the requirements in s.13(2) of the Act, and so his applications must be taken to have been withdrawn.

Comment

Dr Thaler and his collaborators sought to establish that AI systems can make inventions and that the owners of such systems can apply for and secure the grant of patents for those inventions.

However, this final judgement was unsurprisingly in line with other decisions made by European Union and the United States’ courts. Nonetheless, it is important to understand the scope of this decision. The UK Supreme Court only addressed the interpretation and application of the relevant Patents Act in relation to “inventors”, and Thaler’s right to file for patent applications arises from his ownership of DABUS. This judgement did not deal with broader questions on whether AI inventions are patentable, or whether a human should be entitled to apply for a patent over technical advances created by AI.