UK Supreme Court declines to recognise Machine as Inventor of Patent

 

 

The UK Supreme Court has held that for the purposes of the UK Patents Act, 1977 patent rights can be conferred only to a “natural person” and not to any machine as in the present case which is claimed to be the inventor by the name of “DABUS” acting autonomously and powered by Artificial Intelligence. 

 

Case: 

Thaler (Appellant) 

- vs - 

Comptroller-General of Patents, Designs and Trade Marks (Respondent)

 

Coram: 

Lord Hodge

Lord Kitchin

Lord Hamblen

Lord Leggatt

Lord Richards

 

Brief Facts:

 

Dr Stephen Thaler filed two applications in October and November of 2018 (“The Applications”) to grant patents for what he claimed were inventions for “new and useful devices and methods”. The applications were filed under the 1977 Act (“The Patents Act”) and the grant forms (“The Grant Forms”) were attached to them. Dr Thaler stated that he was not an inventor and that he was the owner of a machine named DABUS (“DABUS”) which acted autonomously and was powered by AI. Dr Thaler claimed that he had acquired the right to grant the patents by owning DABUS.

 

He was served with a notice that he would have 16 months from the date of the filing of the applications to file a Statement of Inventorship and an Indication of the Derivation of His Right to the Grant of the Patents (“The Rules”) and requested a hearing. 

 

Dr. Thaler responded to those requests in a letter dated 28 August 2019, sent by his patent attorney, Mr. Robert Jehan of Williams Powell. In that letter, Mr. Jehan asserted that Dr. Thaler had correctly filed the Form 7 for each of those applications, and that the 1977 Act, as well as the Rules of Procedure, had been fulfilled. Mr. Jehan further asserted that the inclusion of the name of the “inventor” had been a procedural requirement, and had been satisfied. However, in order to avoid any confusion, he attached to the response a modified Form 7 with a statement that clearly stated Dr. Thaler did not identify any person he believed was the inventor of the invention because the invention was “solely and exclusively conceived by” DABUS. According to Mr. Jehan, this meant that DABUS had to be named as the inventor. Mr. Jehan concluded by requesting a hearing to determine whether the objection was sustained.

 

The aforesaid response was rejected the Patent Office and such rejection was upheld by the UK High Court. Thereafter, Dr.Thaler moved the Supreme Court. 

 

Held: 

The Supreme Court dismissed the appeal of Dr.Thaler upholding the view of the Patent Controller primarily on the following reasons:

 

The purport and meaning of the term “inventor” as per the Patents Act, 1977 - The United Kingdom Supreme Court has held that an inventor must be a “natural person” within the meaning of the 1977 Act. Further, confirmed in the judgement of Rhone-Poulenc Rorer

International Holdings Inc v Yeda Research and Development Co Ltd [2007] UKHL

43 which held that an inventor must be a natural person and any other person to whom the patent may be granted must claim through the inventor relying on Sections 7(2), 7(3) and 13 of the said Act. 

 

Dr Thaler has argued throughout that the technical advances and the new products described and disclosed in the applications were devised by DABUS, and that DABUS was their inventor. The Supreme Court held that The structure and content of sections 7 and 13 of the Act, on their own and in the context of the Act as a whole, permit only one interpretation: an inventor within the meaning of the 1977 Act must be a natural person, and DABUS is not a person at all, let alone a natural person.

 

In paragraph 59 of the Judgement the Court held that :

“A patent may be granted only to a person falling in one of the three categories of persons set out in section 7(2), however. The primary person to whom a patent may be granted is the inventor (section 7(2)(a)). But in preference to the inventor, it may be granted to a person or persons mentioned in section 7(2)(b), or to the successor or successors in title of any person mentioned in paragraph (a) or (b) (section 7(2)(c)) – again being persons with legal personality, although not necessarily natural persons – for they may include, for example, a corporate employer”.

 

The Court held that the inventor must be a natural person and that any other person to whom a patent may be granted must claim through the inventor, for example as employer or as a person who, by virtue of, for example, an enactment or rule of law, or by virtue of an enforceable term of an agreement was at the time of making the invention entitled to the whole of the property in it.

In paragraph 63 of the Judgement the Court held that :

Further, confirmation that an inventor must be a person is to be found in the terms of section 13. The Court referred to section 13(1) of the said Act which confers on the inventor the right to be mentioned, and section 13(2) which requires the applicant to file the statement identifying the person or persons whom he believes to be the inventor or inventors. There is no suggestion in any of these provisions that an inventor may be a machine.

Finally to hold that DABUS – a machine and not a “natural person” is not an Inventor for purposes of the Patents Act, 1977 and also that Dr. Thaler cannot obtain patent rights through DABUS. 

www.asaadvocates.com