DABUS: AI’ll be back

DABUS: AI’ll be back

Published By Sam Mitchell

23/09/2021 11:56:56

In a hotly awaited decision, the English Court of Appeal has ruled that AI-based machines cannot be named as inventors, upholding the original decision of the High Court and Comptroller general.

Dr Stephen Thaler has become well known in the intellectual property field ever since filing patent applications for two inventions: one entitled “Food Container” (GB18116909.4) and the other entitled “Devices and Methods of Attracting Enhanced Attention” (GB181816.0).  However, despite its title, it is not the subject matter of the invention that has been attracting attention, but the named inventor: ‘DABUS’, an AI machine owned by Dr Thaler.

Dr Thaler’s applications were first rejected by the UK IPO Comptroller on the grounds that DABUS is not a person as envisaged by sections 7 and 13 of the Patents Act 1977.  The High Court also dismissed his appeal ([2020] EWHC 2412). Dr Thaler subsequently appealed to the Court of Appeal, which addressed three questions:

  1. Does the 1977 Act require an inventor to be a person?

  2. What is s.13 of the 1977 Act for, and how does it work?

  3. What is the right response to the information Dr Thaler proved under s13(2)?

Following a forensic and historical review of the relevant legislature – starting with s6 of the Statute of Monopolies of 1623 – the Court of Appeal unanimously agreed that an inventor must be a person.

s13 of the Act requires an applicant for a patent to identify the person whom they believe to be the inventor and, where the applicant is not the inventor, to indicate the derivation of their right to be granted the patent.  If they fail to do so, the application shall be taken to be withdrawn. There was disagreement amongst the judges as to the interpretation of s13.  Birss LJ was of the view that, although Dr Thaler had not identified the person he believed to be the inventor (because he had identified the machine, DABUS), this was nevertheless reflective of his honest belief that DABUS was the inventor and thus satisfied s13.  Laing LJ and Arnold LJ disagreed, finding that s13 required that a person be identified as the inventor.  Laing LJ and Arnold LJ further held that Dr Thaler had not adequately indicated the derivation of his right to be granted the patent.  In this regard, Dr Thaler’s position was that his right to the patent derived from his ownership of DABUS, but the judges did not consider such a right as being known to the law.  As Arnold LJ put it: “there is no rule of law that a new intangible produced by existing tangible property is the property of the owner of the tangible property.”   

The Court of Appeal re-iterated that modern patent law is a ‘creature of statute’, and the 1977 Act contains the necessary answers.   As DABUS is not a person, the requirements of the 1977 Act have not been satisfied.  Accordingly, the Comptroller and High Court were correct in holding that both applications were deemed withdrawn, and Dr Thaler’s appeal was therefore rejected.  In doing so, the Court of Appeal emphasised that its decision was an application of the law as it presently stands, and that the case primarily related to the correct way to process patent applications in the light of the relevant legislation. 

The split decision leaves room for appeal to the Supreme Court on the correct interpretation of s13 – reflecting that the questions primarily before the court relate to the correct way to process applications through the IPO, rather than questions as to patentability. However, given that Dr Thaler’s case varied over the course of the proceedings (as recognised by Birss LJ in paragraph 82 of the judgment), we might expect a re-worked inventorship argument in any further appeal.
The case is on-going in multiple jurisdictions, including the US, Australia and South Africa, and it will be interesting to see if and how those courts and third parties use this judgment in future decisions.

Furthermore, both WIPO and the UK IPO are currently considering whether the law should be revised to accommodate AI and the UK Government wants the UK to be a “leader in AI technology” and “the best place in the world for research and innovation”, meaning legislative reforms might be on the horizon.