An AI-based machine cannot be named as an inventor: the DABUS saga continues in the UK
UK Court of Appeal: Thaler v Comptroller-General

The UK Court of Appeal has rejected an appeal in a case concerning the rejection of patent applications filed at the UK Intellectual Property Office (UKIPO) on the basis that an AI-based machine known as “DABUS” (Device for the Autonomous Bootstrapping of Unified Sentience) was listed as an inventor.  This appeal case in the UK follows a number of corresponding cases in a project involving patent applications filed before patent offices around the world by Dr. Stephen Thaler seeking to establish that AI-based machines can make inventions and that the owners of such systems can obtain patents in respect of those inventions – the so-called “DABUS cases”.

On two patent applications filed before the UKIPO, statements of inventorship were filed listing DABUS as the name of the inventor and asserting that Dr. Thaler was entitled to be granted a patent by “ownership of the creativity machine DABUS”.  Under UK law, the Patents Act 1977, section 7 stipulates that a patent may be granted to (a) the inventor, (b) any person who is the first owner of the “property in” the invention at the time of the making of the invention.  Moreover, under section 13 of the Patents Act, the inventor has the right to be mentioned in the patent, and the applicant must (i) identify the person believed to be the inventor or inventors; and (b) where the applicant is not the inventor, indicate the derivation of his or their right to be granted the patent.

The UKIPO had previously refused the applications under sections 7 and 13 of the Act because DABUS was deemed not to be a person and so could not be deemed to be the inventor and, moreover, Dr Thaler was deemed not entitled to apply for the patents.  On an earlier appeal to the High Court, the judge had upheld the UKIPO’s decision.  The case was then given permission to appeal to the Court of Appeal.  As is normal, the case in the Court of Appeal in the UK involved three judges, two with significant patent law experience from having previously sat as judges, namely Lord Justice Birss and Lord Justice Arnold, and a third, namely Lady Justice Laing.

Arnold LJ and Laing LJ upheld the High Court’s judgment, but Birss LJ dissented. Thus, whilst the decision of the Court of Appeal was to dismiss the appeal, and uphold the UKIPO’s decision that the applications were deemed withdrawn, it is interesting to examine the dissenting judgment of Birss LJ. Birss LJ affirmed that machines are not inventors within the meaning of the Act (and this was also the judgment of LJ Arnold and LJ Laing) because the inventor is the person who actually devised the invention, and a machine is not a person.  Thus the DABUS machine was not an inventor under UK law.  However, Birss LJ explained that in his judgment the issue in the case was one of process, namely whether the UKIPO could deem the applications withdrawn because the statement of inventorship did not identify the inventor (as in a person who devised the invention), and did not provide a derivation of the right to be granted a patent to the applicant from an inventor (as in a person who devised the invention).

“In fact this case primarily relates to the correct way to process patent applications through the Patent Office and turns on material which was either buried in the papers but ignored in the written and oral argument, or not referred to at all. It is an object lesson in the risks of advocacy being distracted by glamour.”

In Birss LJ’s dissenting judgment, the UKIPO could not reject the applications for failure to provide a statement of inventorship which did not in fact identify the inventor, and did not in fact provide a derivation of the right to be granted a patent to the applicant from an inventor, when a statement of inventorship had been submitted by Dr. Thaler under which he believed he had satisfied the requirements of section 13. As a result, in the judgment of Birss LJ, for the two applications concerned, the fact that the creator of the inventions was a machine was no impediment to patents being granted by the UKIPO, despite machines not being inventors within the meaning of the Patents Act.

Since, however, Arnold LJ and Laing LJ did not follow the judgment of Birss LJ, the appeal was nevertheless dismissed.

The consequence of the case is that UK law on inventorship and the right to be granted a patent has been confirmed to require that a person must be named as an inventor – a machine is not a person.  If not, the UKIPO shall deem any patent application with no such person named, as withdrawn.  For the foreseeable future, and in line with other decisions from the EPO and various other patent offices around the world, it will thus not be possible to have a patent granted in the UK with a single inventor being listed as an AI-based machine.