Schlich

October 2021

Background

Dr Thaler filed two UK patent applications and subsequently filed Form 7’s stating that the inventor for both applications was the AI system “DABUS”. Dr Thaler also indicated on the Form 7’s that he had acquired the right to be granted the patents “by ownership of the creativity machine ‘DABUS'”.

The UKIPO responded stating that Section 13(2) of the UK Patents Act had not been complied with.

Section 13(2) states:

(2) Unless he has already given the Patent Office the information hereinafter mentioned, an applicant for a patent shall within the prescribed period file with the Patent Office a statement-

(a) identifying the person or persons whom he believes to be the inventor or inventors; and

(b) where the applicant is not the sole inventor or the applicants are not the joint inventors, indicating the derivation of his or their right to be granted the patent;

and, if he fails to do so, the application shall be taken to be withdrawn.

Dr Thaler then filed an amended Form 7 stating that there were no persons who he believed were inventors as the invention was conceived entirely by DABUS. The UKIPO still considered that Section 13(2) was not complied with and as a result treated the applications as withdrawn.

UKIPO Decision and High Court Judgement

The UKIPO Hearing Officer’s decision to treat the applications as withdrawn was based on the following:

• The UK Patents Act requires the inventor to be a person (even if this is not explicitly stated)
• It was accepted by both sides that DABUS was not a person and as a consequence of this, DABUS could not be considered to be an inventor
• Furthermore, the applicant (Dr Thaler) would still not have been entitled to be granted the patents by virtue of ownership of DABUS as a satisfactory rule of law for the derivation of the right has not been provided

On appeal to the High Court, the Judge agreed with Hearing Officer finding that:

• An inventor has to be a person;
• Dr Thaler had not sufficiently acquired the right to be granted the patent from DABUS; and
• Hearing Officer was correct to treat the application as refused (despite the Form 7s being filed).

On the last point, Dr Thaler argued that Section 13(2) only refers to a subjective belief of who the applicant believed the inventor to be. This required was met by filing the Form 7 which states that Dr Thaler believes DABUS to be the inventor. However, the High Court considered that: “if a flaw is spotted before grant, so that an application is bad on its face and incapable of justification under s7 the Comptroller will be justified in refusing to proceed with the application”. Accordingly, the UKIPO was correct to treat the applications as withdrawn.

Court of Appeal

On a further appeal to the Court of Appeal, the same three main issues remained:

1. Can a “non-person” be an inventor?
2. Has Dr Thaler acquired the right to be granted the patents?
3. Did Dr Thaler’s Form 7’s meet the requirements of Section 13?

Regarding the first point, following a thorough analysis of the history of patent law (going all the way back to 1623), all three judges considered that, based on various passages in the UK Patents Act, an inventor had to be a person.

Regarding the second point, even if DABUS were considered to be an inventor, all of the judges considered that Dr Thaler could not have been considered to have acquired the right to be granted a patent for the inventions. Dr Thaler argued that by analogy to the owner of an apple tree (he who owns the apple tree also owns the apples that are produced by the tree) he should be the owner of any inventions made by DABUS. However, the judges considered that this principle, which applied to tangible property, could not be extended to intangible property

On the third point, the judges’ had different views. Specifically, Birss LJ and Arnold LJ held opposing views on how the UKIPO should have treated Dr Thaler’s applications following the filing of the Form 7’s

Birss LJ noted that the UKIPO does not verify the accuracy of statements included in Form 7’s (for example, it is not necessary to provide proof of an assignment with the Form 7. A statement attesting that an assignment has taken place is sufficient). In addition, Birss LJ noted that entitlement can only be challenged by a third-party with an entitlement to the patent and that the UKIPO cannot initiate entitlement proceedings of its own motion.

Birss LJ considered that Dr Thaler had complied with his legal obligation to identify who he believed the inventor to be and indicated how he derived the right to the patent. As a result of this, the applicant’s alleged right to the patents was clear to the public and anyone with a competing right could challenge the ownership of the patent applications. He believed that it would not relevant to consider the accuracy of the statements made by Dr Thaler (as this is not within the UKIPO’s duties) and as a result, the requirements of Section 13(2) had been complied with and the applications should not have been treated as withdrawn.

By contrast, Arnold LJ believes that Dr Thaler did not indicate a ” person or persons” as required by Section 13(2)(a) (he had indicated a non-person) and consequently, Section 13(2) had not been complied with. He considered that it was immaterial as to whether he truly believed DABUS to be the invention as the answer to the question of “which person is the inventor” was a legal impossibility. Arnold LJ acknowledged that the UKIPO is not in a position to determine whether answers given on a Form 7 are accurate, but in the case, the answer was clearly wrong on face value.

Similarly, Arnold LJ considered that the Dr Thaler did not identify the derivation of his right to the patent. Again, the answer he gave as a matter of law was incorrect and this could have been determined at face value without a investigation as to the accuracy of the statement. Arnold LJ therefore concluded that the Form 7’s had not been completed satisfactorily, Section 13(2) had not been complied with and the applications were correctly treated as withdrawn.

The deciding vote therefore lay with Elisabeth Laing LJ who agreed with Arnold LJ that Dr Thaler did not indicate a person who could be invention and it was not possible for Dr Thaler to have acquired any rights in the patent from DABUS.

Accordingly, the appeal was dismissed.

Conclusions

Although all judges agreed that the Patents Act requires the inventor to the a person and therefore an AI system cannot be considered to be an inventor for a patent, the judges different on their view to the consequences of naming an AI system as an inventor on a patent application.

The question of AI inventors is a hot topic, but for AI systems to be recognised as inventors it would seem that this would need to be permitted via a legislative change to the UK Patents Act.

However, in the meantime, given that two of the most IP-experienced judges in the Court of Appeal disagreed on how Dr Thaler’s applications should have been treated, it will be interesting to see whether this case is appealed further to the Supreme Court.

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