The Patents Court has rejected the argument that AI machines can qualify as ‘inventors’ under the Patents Act 1977 in Thaler v The Comptroller-General of Patents, Designs and Trade Marks [2020] EWHC 2412 (Pat).
Background
In 2018 Dr Thaler filed two patent applications in his own name. Later, in July 2019, he filed statements of inventorship in July 2019, which stated that the inventor was an artificial intelligence machine called DABUS and that Dr Thaler had acquired the right to grant of the patents in question by “ownership of the creativity machine DABUS”.
The Comptroller of the UK Intellectual Property Office rejected both applications on the basis that AI machines, as non-natural persons, could not be inventors under the Patents Act 1977. The Comptroller held that:
- a machine cannot be identified as an inventor under the Patents Act 1977 because it is not a natural person;
- DABUS was not a legal person and could not own anything; as a result, it could not assign any rights to the grant of the patent;
- Dr Thaler did not have any rights to a patent, and
- the applications ought to be treated as withdrawn.
Dr Thaler appealed to the High Court.
The court’s decision
Marcus Smith J rejected the appeal and upheld the decision of the UKIPO Comptroller.
The main crux of the matter was that Dr Thaler was a person but not the inventor; and DABUS was the inventor but not a person. Dr Thaler tried various arguments to get around this fact.
Under section 7(3) of the Patents Act 1977, there were three categories of person to whom a patent could be granted. The first was the inventor. The judge said that the inventor had to be a natural person and could not be a machine and said that the definition of an inventor should be kept close to that which must arise out of the mind of an individual. Attribution of an inventive concept to a non-natural person is not something that falls within the meaning of the term “inventor”, because such a person is not the “actual” deviser of the invention.
The other categories in section 7 involved transfer of property to persons in the classes set out in the section. These persons could be legal as well as natural: unlike the case of inventors, there was no intrinsic reason why corporations ought to be excluded from being granted patents. However, as DABUS was not a person, it could not own property and therefore could not transfer the right to any invention it made to anyone.
The judge stressed that nothing in this analysis should be taken to suggest that DABUS was not itself capable of an inventive concept. He said that DABUS had “invented” the inventions which were the subject of the patent applications. Nevertheless, he concluded that DABUS was not, and could not be, an inventor under the Patents Act 1977, simply because DABUS was not a person.
The case comes as the UKIPO is consulting on reforms to the intellectual property framework to better reflect the role of AI. Among other things, the consultation considers the role of AI as inventor.
