Dr Stephen Thaler, who filed the applications in 2018, argued that his AI, the Device for the Autonomous Bootstrapping of Unified Sentience (DABUS), ought to be capable of being considered an inventor. The respondent, the Comptroller General of Patents, Trade Marks and Designs, originally rejected the applications on the grounds that the provided statements of inventorship did not satisfy section 13(2) of the Patents Act 1977.

The appeal was heard by Lord Justice Arnold, Lady Justice Elisabeth Laing, and Lord Justice Birss. Robert Jehan and Ryan Abbott appeared for the appellant and Stuart Baran for the respondent. Dr Thaler’s application was one of a number submitted to jurisdictions around the world seeking to establish that AI systems are capable of making inventions.

Not a “person”

The two patent applications were for a method of food storage and a form of flashing light. In the applications, the appellant stated he was not the inventor of the inventions, and he was therefore informed by the Intellectual Property Office that he would need to file statements of inventorship within 16 months of the filing date of each application. This took place in July 2019.

In the forms, the appellant gave the name “DABUS” in the section for the family name of the inventor. In response to the box requiring him to indicate how he had the right to be granted a patent, Dr Thaler wrote “by ownership of the creativity machine DABUS”, which he had created himself, explaining that the machine had generated the inventions.

In August 2019, the IPO responded to the application, stating that Dr Thaler had not complied with section 13(2) of the 1977 Act. An amended form was duly submitted in which he declared that “the applicant identified no person or persons whom he believes to be an inventor as the invention was entirely and solely conceived by DABUS” and requested a hearing on the application.

At the patent hearing, it was concluded that DABUS was not a “person” as envisaged by the 1977 Act and so could not be considered an inventor, nor was the appellant able to apply on its behalf by virtue of his ownership of the machine alone. The application was deemed to have been withdrawn. This decision was appealed to the High Court, which upheld the decision of the hearing officer.

It was submitted for the appellant that the definition of an inventor as the “actual deviser” of the invention did not necessitate that they be a person, even if the 1977 Act was written in the assumption that they would be. Further, the general principle by which the owner of a thing gained ownership of fruits produced by that thing applied to intangible produce such as patents.

In response, it was submitted for the Comptroller that the Act did in fact require inventors to be natural persons. It was accepted by them that DABUS was the actual deviser of the inventions and that they were potentially patentable, but that did not allow for the Act to grant patents to non-persons.

Legal impossibility

In his judgment, with which Lady Elisabeth Laing agreed, Lord Arnold said of the definition of “inventor” in the 1977 Act: “It is clear that, upon a systematic interpretation of the 1977 Act, only a person can be an ‘inventor’. The starting point is section 130(1) which provides that ‘inventor’ has the meaning assigned to it by section 7, [which provides] that ‘inventor’ in relation to an invention means the actual deviser of the invention’. A dictionary definition of ‘deviser’ is ‘a person who devises; a contriver, a planner, an inventor’.”

He continued: “Further support for this interpretation is afforded by section 2(4), which provides that prior disclosures of an invention are not novelty-destroying in certain circumstances. Again, it is plain from the references to ‘the inventor or … any other person’ that the inventor must be a person.”

Examining whether Dr Thaler was entitled to apply for the patents on DABUS’s behalf, he said: “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, as Dr Thaler contends, and certainly no rule that the property contemplated by section 7(2)(b) in an invention created by a machine is owned by the owner of the machine. Accordingly, the hearing officer and the judge were correct to hold that Dr Thaler is not entitled to apply for patents in respect of the inventions given the premise that DABUS made the inventions.”

On whether the hearing officer was entitled to consider the application withdraw, Lord Arnold said: “In the present case Dr Thaler did not identify ‘the person or persons whom he believes to be the inventor or inventors’ as required by section 13(2)(a). On the contrary, he deliberately identified a non-person as the inventor. The fact that he may genuinely have believed that DABUS was the inventor is neither here nor there. The answer he gave to the question was a legal impossibility.”

He concluded: “If Dr Thaler were able to establish that the statute did not require the inventor to be a person and that, as a matter of law, he could derive his entitlement to apply for patents in respect of the inventions purely from his ownership of DABUS, then the position would be different. But, given that the applications do not comply with two important statutory requirements, it would not be right in my view to permit them to proceed, particularly since the statute provides no other mechanism for addressing the non-compliance.”

For these reasons, the appeal was refused.

Distracted by glamour

In a dissenting judgment, Lord Justice Birrs began by noting: “Given the way this appeal is presented by both parties, the case appears to be about artificial intelligence and whether AI-based machines can make patentable inventions. 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.”

He later added: “There is more than a hint in this case of the idea that if only Dr Thaler was not such an obsessive and, instead of calling DABUS the inventor, he named himself and then none of these problems would arise. However since inventors can waive their right to be mentioned under s24(3), even if the Comptroller suspects that Dr Thaler is really the inventor, Dr Thaler has clearly waived whatever right he may have had to be mentioned and that should be the end of that.”