Stephen Thaler named an AI machine, DABUS, as the inventor on two patent applications. He said he was entitled to the patents because he owned DABUS. Those were two separate propositions under the Patents Act 1977. The first concerned who could be an inventor. The second concerned how an applicant who was not the inventor could acquire the right to a patent.
The applications
On 17 October 2018 Dr Thaler filed United Kingdom patent application GB1816909.4 for a new kind of food or beverage container. On 7 November 2018 he filed GB1818161.0 for a new kind of light beacon and a new way of attracting attention in an emergency. He stated that he was not the inventor. He later said that each invention had been created by the artificial intelligence of a machine called DABUS, and that he was entitled to the patents because he owned the machine.
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The United Kingdom Intellectual Property Office required statements of inventorship under section 13 of the Patents Act 1977 and rule 10(3) of the Patent Rules 2007, within sixteen months of the filing date. Dr Thaler named DABUS. The Office said that he had not identified a person as inventor and had not explained how he derived the right to apply. His attorney maintained that naming DABUS was enough. After a hearing on 14 November 2019, Mr Huw Jones, Deputy Director and Hearing Officer for the Comptroller, decided on 4 December 2019 that DABUS was not a person under sections 7 or 13, had no rights it could transfer, and that ownership of the machine did not entitle Dr Thaler to a patent. The applications would be taken to have been withdrawn when the sixteen-month period expired.
The appeals below
Marcus Smith J dismissed Dr Thaler’s appeal on 21 September 2020. The Court of Appeal dismissed a further appeal on 21 September 2021. Arnold LJ and Elisabeth Laing LJ held that an inventor must be a person, that there is no general rule that intangible property created by a machine belongs to the machine or its owner, and that the applications had properly been taken to have been withdrawn. Birss LJ agreed that a machine is not a person, so DABUS could never be an inventor, but he would have allowed the applications to proceed. In his view it was enough that Dr Thaler had honestly stated whom he believed to be the inventor and how he claimed title. The Comptroller did not, he thought, have to decide that the claim was legally sound.
The statutory scheme
Section 7(3) defines the inventor as the actual deviser of the invention. Section 7(2) then sets out an exhaustive code. A patent may be granted primarily to the inventor; in preference to the inventor, to a person who was entitled to the property in the invention by enactment, rule of law, agreement or a similar source; or to a successor in title of such a person, “and to no other person”. Drawing on the House of Lords’ decision in Yeda Research, Lord Kitchin treated the inventor as a natural person. Anyone else who may be granted the patent, including a corporate employer, must claim through that inventor.
Section 13 requires the applicant, within the prescribed period, to identify the person or persons whom he believes to be the inventor and, if he is not the inventor, to indicate how he derives the right to the patent. If he does not, the application shall be taken to be withdrawn. The threshold is deliberately low, because the Comptroller cannot investigate every genuine statement. An obviously defective indication is not enough. In Nippon Piston Ring, for example, the applicant failed to show which limb of section 7(2) it relied on.
The Court was not deciding whether technical advances generated autonomously by machines ought to be patentable, or whether the meaning of “inventor” should be widened. Those are policy questions. Nor did the Office investigate whether DABUS had in fact created the inventions. It could not go behind Dr Thaler’s assertions of fact, and the appeals proceeded on the assumption that those assertions were correct. Dr Thaler did not claim that he was the inventor and had used DABUS as a tool. Lord Kitchin said that, had that been his case, the outcome might well have been different.
DABUS was not an inventor
Lord Kitchin, with whom Lord Hodge, Lord Hamblen, Lord Leggatt and Lord Richards agreed, held that sections 7 and 13 allow only one interpretation: an inventor must be a natural person. DABUS is a machine, not a natural or legal person. The wider Act points the same way. Provisions dealing with disclosures in breach of confidence and with disputes about entitlement before and after grant, including sections 2(4), 8 and 37, contemplate persons with legal personality. DABUS was therefore not an inventor under sections 7 or 13.
Owning the machine gave no right to a patent
Dr Thaler argued that he owned the fruits of DABUS by analogy with the doctrine of accession, under which the owner of a cow also owns its calf. He also relied on provisions, including sections 7(2) and 39 to 42, which speak of property in an invention and of an invention belonging to an employer or employee.
Lord Kitchin rejected the argument. There was no inventor through whom Dr Thaler could claim. Section 7 does not confer a right to a patent for something created autonomously by a machine, still less a right based only on ownership of the machine. He agreed with Elisabeth Laing LJ that Parliament did not have thinking machines in mind when enacting the scheme, and that the 1977 Act would have to be amended if patents were to be granted for inventions made by machines.
Accession concerns new tangible property produced by existing tangible property. These applications concerned concepts for devices and methods, assumed to have been generated autonomously by DABUS. There was no principled basis for applying accession to them. Ownership of DABUS therefore gave Dr Thaler no right to apply for or obtain the patents.
Why the applications were withdrawn
The Comptroller was not required to investigate whether DABUS really devised the products. Even accepting Dr Thaler’s account, he had identified no human inventor and no legally recognised way in which ownership of the machine gave him title. His statements therefore failed to meet section 13. The Act specified the procedural consequence.
Verdict: The Supreme Court unanimously dismissed Dr Thaler’s appeal. Both applications were deemed withdrawn. The Court made no finding that DABUS had invented the products and did not decide the policy question of whether patents should be available for inventions generated autonomously by machines.
Source: Thaler v Comptroller-General of Patents, Designs and Trade Marks [2023] UKSC 49
