Can AI qualify as an “inventor” for the purposes of patent law?

28 September 2021 by Rosalind English

Thaler v Comptroller General of Patents Trade Marks and Designs [2021] EWCA Civ 1374

The Court of Appeal has ruled that an artificial intelligence machine cannot qualify as an “inventor” for the purposes of Sections 7 and 13 of the Patents Act because it is not a person. Further, in determining whether a person had the right to apply for a patent under Section 7(2)(b), there was no rule of law that new intangible property produced by existing tangible property was the property of the owner of the tangible property, and certainly no rule that property in an invention created by a machine was owned by the owner of the machine. 

Background Facts and Law

This was an appeal by the owner of an artificial intelligence machine against a decision upholding the respondent Comptroller’s refusal of his patent applications in respect of inventions generated by the machine.The appellant had submitted two patent applications designating an artificial intelligence machine (DABUS), as the inventor. DABUS stands for “Device for the Autonomous Bootstrapping of Unified Sentience”, an artificial neural system owned by Dr Thaler. The first invention was entitled “Food Container” and concerned the shape of parts of packaging for food. The second was entitled “Devices and Methods for Attracting Enhanced Attention”, and was a form of flashing light. On the face of it each disclosed a potentially patentable invention, that is to say patentable as defined by s1 of the 1977 Act. The appellant owned the machine, but had also created it and set it up to produce the inventions in issue. In response to the box requiring him to indicate how he had the right to be granted a patent, he wrote: “by ownership of the creativity machine ‘DABUS'”. The Intellectual Property Office indicated that the statement of inventorship form did not satisfy the Patents Act 1977 Pt I s.13(2), which required him to identify a person as the inventor (section 13 (2) (a) and to indicate how he had derived his right to be granted the patent (section 13(2) (b)). It therefore determined that the applications were deemed to be withdrawn. The applicant was still not entitled to apply for a patent simply by virtue of ownership of DABUS, because a satisfactory derivation of right had not been provided (as machine cannot pass on ownership). The High Court upheld that decision. First, it considered Section 7, which sets out the circumstances in which a person might right to apply and obtain a patent, and found that its natural meaning was that the inventor was a person. Second, it found that although the appellant could perhaps have claimed a right to be granted a patent as the inventor under Section 7(2)(a), he had not advanced such a case. Third, it found that an applicant’s subjective and honest belief that they were entitled to apply for a patent was insufficient to entitle them to the grant of a patent as that would render the provisions of s.7 otiose.

Held

The Court by a majority dismissed the appeal (Birss LJ dissenting). The critical question was whether, under Section 7 of the Act, was whether only a person could be an “inventor”. It was clear from Yeda Research and Development Company Ltd v. Rhone-Poulenc Rorer International Holdings [2007] UKHL 43   that s.7 provided an exhaustive code for determining who was entitled to the grant of a patent. It was plain that only a person could be entitled under s.7(2). Support for that interpretation was afforded by the wording of Section 2(4) and Section 8. Further, Section 13(1) conferred a “right” upon the inventor or joint inventors. Only persons could have rights and it followed that inventors had to be persons. Under Section 13(2)(a), an applicant was also required to identify “the person or persons whom he believes to be the inventor or inventors”.

The second question was whether the appellant entitled to apply under s.7(2)(b).

The appellant claimed that he was at the time of the making of the inventions entitled to “the whole of the property in them” by virtue of a rule of law, and thus was entitled to apply. However, an invention was a piece of information, and there was no property in information, even if it was confidential. When s.7(2)(b) spoke of “the whole of the property in [the invention]”, the property referred to was the right to apply for and obtain a patent in respect of that invention. The rule of law which the appellant relied upon was the common law doctrine of accession described in Blackstone’s Commentaries on the Laws of England, Ch.26. All the instances of the application of that doctrine in Blackstone concerned new tangible property which was produced by existing tangible property. According to the doctrine, the owner of pre-existing tangible property owned the new tangible property, but there was no suggestion in Blackstone that the rule applied to intangible property produced by tangible property. Therefore there was certainly no rule that the property contemplated by s.7(2)(b) in an invention created by a machine was owned by the owner of the machine.

It followed that, given the appellant’s position that the machine had made the inventions, he was not entitled to apply for patents.

Deemed withdrawal under s.13(2): What was the right response to Dr Thaler’s statement of inventorship under s13(2)? Dr Thaler advanced to the Comptroller that he derived his right under s7(2)(b) because he created, owned and operated DABUS and there was a rule of law whereby the owner and operator of a machine which created inventions was entitled to the right to apply for and be granted a patent for an invention created by that machine.

In Birss LJ’s dissenting judgment, his Lordship observed that

Dr Thaler has complied with his legal obligations under s13(2)(b) as well. He has given an indication of the derivation of his right to be granted the patent. The claim to derivation will be clear on the register. The assertion, if correct, is not incomplete. It would mean that Dr Thaler does indeed have the right to apply for and be granted the patent. When the application is published then if someone thinks he has the right to patents for these inventions he would see how it is that Dr Thaler’s claim is put. If he thought he had a better right than Dr Thaler he would be able to come to the Comptroller in proceedings under s8 (or after grant under s37) and, if he can, establish that he should be granted the patent instead.

But the majority found that it was not the Comptroller’s function to examine statements of inventorship and entitlement filed by the applicant pursuant to s.13(2) to determine whether they were well-founded. The Comptroller’s function under s.13(2) was to check whether the prescribed statements had been filed in time, and if so whether the statements filed appeared to comply with the statutory requirements or were defective on their face. In this case, the appellant had not identified “the person or persons whom he believed to be the inventor or inventors” as required by s.13(2)(a). On the contrary, he deliberately identified a non-person as the inventor, which was a legal impossibility. Nor did the appellant identify “the derivation of his right … to be granted the patent”. He simply asserted that it was sufficient that he owned the machine, but as a matter of law that was incorrect. It followed that the appellant had not complied with either of the requirements laid down by s.13(2). The hearing officer and the judge had been correct to hold that the applications were deemed to be withdrawn.

Comment

There seems to be a curious type of circular reasoning in the original refusal of the patent and its upholding in the higher courts. DABUS could not be granted a patent because it was not a person; the owner of DABUS, Mr Thaler, could not be granted a patent because his machine not being a person could not transfer a patent to him. It seems sensible that there should be a general rule about the ownership of a thing conferring ownership over what is produced by that thing. But as more machines like DABUS produce things, the current law of patentability will soon become unfit for purpose. If an owner of a tree derives a right to own the fruits of that tree by virtue of accession, it is odd – if not to say quite anachronistic – that an owner of a machine cannot derive such a right simply because the machine is essentially information; i.e. intangible.

Birss LJ did acknowledge this point:

One of the submissions made was that the technology in this case was unforeseeable at the time of the 1977 Act. I do not believe it matters but if it does then I was not satisfied that the parties had examined that question sufficiently to make such a statement with any confidence. More work would have been required. What has changed since the 1970s is terminology. Edward Feigenbaum’s pioneering work on thinking machines, then called “expert systems”, was published well before the 1977 Act.

But it appears to me anyway that to devote one short paragraph to this submission is too light a dismissal of an important argument. These applications were part of a project involving parallel applications to patent offices around the world in which Dr Thaler and his collaborators, including Robert Jehan of Williams Powell and Professor Ryan Abbott of the University of Surrey (author of The Reasonable Robot: Artificial Intelligence and the Law, Cambridge University Press, 2020), who represented him in these proceedings, sought to establish that artificial intelligence systems can make inventions and that the owners of such systems can obtain patents in respect of those inventions: see www.artificialinventor.com. It was therefore a test case. But Lady Justice Elisabeth Laing stated that he 1977 Act was a ‘complete code’ (per Lord Hoffmann in paragraph 20 of Yeda).

Section 7 is the only provision of the 1977 Act which confers a right to apply for a patent. On its proper construction, it does not permit the grant of a patent in a case in which the inventor is not a person. There is no room for any implication to the contrary. In other words, if the inventor is known not to be a person, section 7 does not and cannot apply to the case at all. If the inventor is not a person, but a machine, no person has, as a matter of law, a right to apply for a patent in respect of the machine’s inventions. It is as simple as that. Whether or not thinking machines were capable of devising inventions in 1977, it is clear to me that Parliament did not have them in mind when enacting this scheme. If patents are to be granted in respect of inventions by machines, the 1977 Act will have to be amended.

The Court acknowledged Professor Abbott’s argument (on behalf of Dr Thaler) that, even if there was no general rule that information produced by a machine was the property of the owner of the machine, nevertheless the owner of the machine owned an invention created by the machine. But Arnold LJ said that “This is really an argument about what the law should be, rather than about the present state of the law.”

Maybe the time has indeed come for Parliament to conduct a root and branch review of the 1977 Act.