Thaler v The Comptroller-General of Patents, Designs And Trade Marks

The Patents Act 1977 establishes an exhaustive scheme governing entitlement to a patent. The inventor is the actual deviser of the invention and must be a person. An artificial intelligence machine, lacking legal personality, cannot be an inventor within section 7 or transfer rights to its owner. Ownership of the machine does not itself confer the right to apply for or obtain a patent for its output. Section 13 must be read with section 7: an applicant’s honest belief about inventorship or entitlement cannot overcome an application that is incapable of satisfying section 7.

Stephen Thaler filed two patent applications naming an artificial intelligence machine, DABUS, as the inventor. He stated that he had acquired the right to apply for the patents through ownership of DABUS, while accepting that DABUS had no legal personality and that he was not the inventor.

The UKIPO required statements of inventorship and entitlement under section 13 of the Patents Act 1977. Huw Jones, acting for the Comptroller, decided that DABUS could not be an inventor, that no rights could pass from DABUS to Dr Thaler, and that the applications would be treated as withdrawn under rule 10(3) of the Patents Rules 2007. The appeal concerned the proper construction of sections 7 and 13 and alleged prejudgment by the UKIPO.

1. Appeal dismissed. The appeal against the UKIPO decision was rejected. The question of when the applications were to be treated as withdrawn was not appealed separately.
2. The relevant starting point was section 7 of the Patents Act 1977, not section 13 considered in isolation. Section 7 provides an exhaustive code for entitlement to the grant of a patent. The statutory categories are the inventor or joint inventors, persons entitled by operation of law or agreement, and successors in title. No other person may receive a patent.
3. A patent application must be made by a person. A patent can therefore be granted only to a person within one of the statutory classes. An artificial intelligence machine is not a person and cannot make an application, hold property, or transfer rights.
4. The expression inventor in section 7(3), meaning the actual deviser of the invention, refers to a natural person. The statutory context, including the requirement for an inventive step and the provisions concerning employees’ inventions, supports that construction. DABUS could have generated the inventions on the assumed facts, but it could not be an inventor within the Act.
5. Dr Thaler could not claim under section 7(2)(b) or (c). There was no identifiable property right capable of being transferred to him and no person capable of making the transfer. Ownership or control of DABUS did not provide a legal mechanism by which the invention or the right to apply for a patent passed to him.
6. Section 13(2) requires an applicant to identify the person whom he believes to be the inventor and, where necessary, indicate the derivation of his entitlement. Subjective and honest belief does not establish entitlement where the application is incapable of satisfying section 7. The statutory presumption in section 7(4) is rebuttable and does not prevent the IPO from refusing to proceed where the application is facially incapable of justification.
7. The UKIPO’s Formalities Manual did not establish prejudgment. The hearing officer was required to apply the Act and Rules and could determine whether the Manual stated the correct process.
8. The question whether an owner or controller of an artificially intelligent machine might himself be the actual deviser was left open because it was not argued. The judgment did not determine that issue.

• High Court (Patents Court): Appeal dismissed from the UKIPO decision dated 4 December 2019, identified as BL O/741/19.
• UK Intellectual Property Office: Huw Jones, acting for the Comptroller, decided that DABUS could not be an inventor, that Dr Thaler had not established entitlement, and that the applications would be treated as withdrawn under rule 10(3) of the Patents Rules 2007.