Alex Bajjon

January 2024

Background

Dr Thaler filed two UK patent applications, one for a new food/beverage container and another for a new light beacon.  As part of the application process, Form 7’s were filed at the UK Intellectual Property Office (UKIPO) stating that the inventor for both applications was the AI system “DABUS”.  On the forms, Dr Thaler also indicated that he had acquired the right to the patents “by ownership of the creativity machine ‘DABUS’”.   Following an objection from the UKIPO, Dr Thaler filed amended the Form 7’s stating that there were no persons who he believed were inventors as the invention was conceived entirely by the AI system DABUS.  

The UKIPO treated the applications as withdrawn for not complying with Section 13(2) of the UK Patents Act 1977, which reads: 

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and, if he fails to do so, the application shall be taken to be withdrawn. 

Earlier Judgements

The UKIPO Hearing Officer’s decision to treat the applications as withdrawn was based on the following:  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 natural person 
• 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, Dr Thaler (the applicant for the patent applications) was not entitled to be granted the patents by virtue of ownership of DABUS as a satisfactory rule of law for the derivation of the right does not apply.  

These decisions were confirmed by both the High Court and Court of Appeal (despite a dissenting judgement from LJ Birss regarding whether Dr Thaler had identified who/what he believed to be the inventor of the invention, i.e. DABUS, despite it not being a natural person).  

Supreme Court

Three issues were presented to the Supreme Court for them to decide upon: 

1. What was the scope and meaning of the term “inventor” in the UK Patents Act 1977 (specifically, did this include non-human inventors)? 
2. Was Dr Thaler nevertheless the owner of any invention in any technical advance made by DABUS and entitled to apply for and obtain a patent in respect of it? 
3. Was the UKIPO correct to treat the applications as withdrawn as a consequence of Dr Thaler’s Form 7 submissions.  

On the first point, following a thorough review of the Patents Act and related case law, the Supreme Court decided that the case law assumes that the inventor must be a natural person and there is nothing in the statute to suggest that an inventor can be anything/anyone other than a natural person.  This was not to say that the Supreme Court contested that the claimed inventions were actually devised by DABUS (this was not disputed between the parties).  Instead, the Supreme Court could only answer whether DABUS could be considered as an inventor for the purpose of the UK Patents Act 1977.  

On the second point, despite Dr Thaler proposing various options as to how he could derive the right to the invention/patents from DABUS, the Supreme Court dismissed these arguments on the basis that, as DABUS was not an inventor, no rights could flow from it and secondly the doctrines relied on by Dr Thaler related to tangible property, rather than intangible property, and therefore a parallel could not necessarily be drawn.  As rights in inventions/patents primarily belong to the inventor, as DABUS is not an inventor (within the meaning of the Patents Act), any argument relating to Dr Thaler’s ownership of the invention/patent applications which rely on deriving rights from DABUS cannot be valid.  In addition, Dr Thaler attempted to rely on the “doctrine of accession”, which provides for assigns ownership of new or unclaimed resources based on the status of being an existing property.  To use the example referred to in the Supreme Court judgement, a farmer who owns a cow also owns the calf of the cow, by virtue of the doctrine of accession.  However, the Supreme Court did not believe that the doctrine of accession could be applied to intangible property, like intellectual property rights, and therefore Dr Thaler’s argument on this point also failed.  

Finally, in view of the above, the Supreme Court considered that it was correct for the UKIPO to treat the patent applications as withdrawn for failing to meet the requirements of Section 13(2) of the UK Patents Act, i.e. for failing to identify the person/persons who Dr Thaler believed to be the inventor and for not providing a proper basis for the right to be granted the patents.  Although it was accepted that it was not the function of the UKIPO to investigate the correctness of an apparently genuine statement made by the applicant, this did not mean that the UKIPO could not and should not intervene when the statement is obviously defective or insufficient.  

Accordingly, the appeal was unanimously dismissed.  

Conclusions 

The judgement should not be read as the Supreme Court’s position on whether AI inventions are patentable or whether AI can independently devise new patentable subject matter.  

The questions before the Supreme Court concerned the interpretation of the UK Patents Act from 1977 (drafted long before the dawn of AI) and how applicants must meet the formal requirements for patent applications set out by the Patents Act and the accompanying secondary legislation.  

This of course does raise serious questions as to how applicants can (truthfully) apply for patent protection for inventions independently devised by AI and who the owners of such inventions are.  Of course, this is a matter for the legislator, rather than the courts and although this is a matter that the UKIPO are currently heavily considering as a policy matter, there are many issues regarding the extent to which AI may have a legal personality that need to be resolved before any changes in policy or the law.