Thaler v Comptroller-General of Patents, Designs and Trade Marks

Under the Patents Act 1977, an inventor must be a natural person. A machine powered by artificial intelligence cannot be an inventor. The statutory code permits a patent to be granted only to the inventor or to a person deriving entitlement through the inventor.

Ownership of a machine does not, through the doctrine of accession or otherwise, confer entitlement to patent technical advances generated autonomously by that machine. An applicant must identify the person believed to be the inventor and, if not the inventor, indicate a legally sufficient derivation of entitlement. Although the Comptroller does not investigate genuine and plausible statements, an obviously defective or insufficient statement does not satisfy these requirements. The prescribed consequence is that the application is taken to be withdrawn.

Dr Stephen Thaler applied for two patents for technical advances which, on his case, had been generated autonomously by an artificial-intelligence machine called DABUS. He did not claim to be the inventor. He named DABUS and asserted that ownership of the machine entitled him to the patents.

The Comptroller's Hearing Officer decided that DABUS was not an inventor under the Patents Act 1977, that Dr Thaler had shown no derivative entitlement and that the applications must be taken to have been withdrawn. Marcus Smith J dismissed an appeal: [2020] EWHC 2412 (Pat). The Court of Appeal dismissed a further appeal by a majority: [2021] EWCA Civ 1374. Birss LJ dissented on whether the statutory filing requirements had been satisfied.

The Supreme Court considered whether DABUS could be an inventor, whether ownership of DABUS entitled Dr Thaler to the patents, and whether the Hearing Officer properly treated the applications as withdrawn.

1. The appeal was dismissed unanimously. Lord Kitchin gave the judgment, with which Lord Hodge, Lord Hamblen, Lord Leggatt and Lord Richards agreed. The appeal concerned the interpretation and application of the Patents Act 1977, rather than the broader policy question whether autonomously generated technical advances should be patentable.

2. An inventor within section 7 must be a natural person. Section 7(3) defines the inventor as the actual deviser of the invention. Read with sections 7 and 13 and the wider statutory scheme, this means the natural person who devised the inventive concept. DABUS was a machine without legal personality and could not be an inventor. The factual assertion that DABUS generated the advances was assumed rather than investigated. The result might have differed had Dr Thaler claimed that he devised the inventions while using DABUS as a tool.

3. Sections 7(2) and 7(3) form an exhaustive code governing entitlement to a patent. A patent may be granted only to the inventor or to a person claiming through the inventor under section 7(2)(b) or (c). Dr Thaler fell within none of those categories. Ownership of a machine does not confer entitlement to a patent for a technical advance autonomously generated by it.

4. The doctrine of accession did not assist Dr Thaler. That doctrine concerns new tangible property produced by existing tangible property. The alleged inventions were concepts for devices and methods, not new tangible objects produced by DABUS. There was no principled basis for transferring ownership or patent entitlement by analogy with accession.

5. Section 13(2) imposes a relatively low but meaningful threshold. The Comptroller does not examine the correctness of genuine and plausible statements of inventorship or derivative entitlement. The UKIPO may nevertheless reject an indication which is obviously defective, insufficient or legally impossible. Dr Thaler identified no person whom he believed to be the inventor, contrary to section 13(2)(a). His assertion that ownership of DABUS supplied his entitlement did not indicate a legally sufficient derivation under section 13(2)(b).

6. The prescribed consequence of those failures was that the applications were taken to have been withdrawn on expiry of the 16-month period under rule 10(3) of the Patent Rules 2007. This was neither an additional patentability requirement nor a new ground for refusing an application.

1. United Kingdom Supreme Court: The appeal was dismissed unanimously: [2023] UKSC 49. The applications remained deemed withdrawn.
2. Court of Appeal: By a majority, the court dismissed the appeal and affirmed that DABUS could not be an inventor, that ownership of DABUS supplied no derivative entitlement, and that the applications were taken to be withdrawn: [2021] EWCA Civ 1374, [2022] Bus LR 375. Birss LJ dissented on compliance with section 13.
3. High Court: Marcus Smith J dismissed the appeal from the Comptroller: [2020] EWHC 2412 (Pat), [2020] Bus LR 2146.
4. Comptroller's Hearing Officer: The Hearing Officer held that DABUS was not an inventor, that Dr Thaler had no entitlement based on ownership of DABUS, and that the applications would be taken to have been withdrawn (BL O/741/19).