November 22, 2021
The appeal arose from an Intellectual Property Office decision, in which two patent applications submitted by the claimant, Stephen Thaler, were rejected and deemed to be withdrawn, as the inventor was designated as an artificial intelligence machine. The statement of ownership therefore did not satisfy s 13(2) of the Patents Act 1977.
In the section for the Family Name of the Inventor in the original application form, Dr Thaler had given the name “DABUS” (Device for the Autonomous Bootstrapping of Unified Sentience), an artificial neural system owned by Dr Thaler. In the box requiring Dr Thaler to indicate how he had the right to be granted a patent, Dr Thaler wrote “by ownership of the creativity machine ‘DABUS’“. Dr Thaler had also filed an explanation stating that the invention was generated by DABUS and briefly explained why the patent should be granted.
When the IPO asked for clarification so that Dr Thaler could comply with s 13(2) of the 1977 Act, Dr Thaler had declared on an amended form 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“. It became clear that not only was Dr Thaler the owner of DABUS but he was also its creator and the person who set it up to run to produce the inventions in issue.
A hearing at the IPO took place at which it was found that, as DABUS was not a person, it could not be considered an inventor under s 13(2). Further, it was found that Dr Thaler was not entitled to apply for a patent under s 7 of the 1977 Act simply by virtue of ownership of DABUS, as no satisfactory derivation of right had been provided.
Dr Thaler appealed to the High Court, which upheld the IPO’s decision. Dr Thaler was granted permission to appeal to the Court of Appeal.
There were three core questions for the Court of Appeal to address:
- Must an “inventor” be a person within the meaning of the Patents Act 1977?
- Is Dr Thaler entitled to apply for patents for the inventions given that they were made by DABUS?
- Was the hearing officer correct to hold that, given the statements made by Dr Thaler regarding inventorship and his derivation of title in the application forms he filed, the applications were deemed to have been withdrawn by virtue of s 13(2) of the 1977 Act?
Lord Justice Arnold, with whom Lady Justice Elisabeth Laing agreed (Lord Justice Birss dissenting), found that it was clear that, upon a systematic interpretation of the 1977 Act, only a person can be an “inventor”.
The starting point is s 130(1) which provides that ““inventor” has the meaning assigned to it by section 7 above”. Section 7(3) 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” (Shorter Oxford English Dictionary, 5th edition, Oxford University Press, 2002). Section 7(2) provides that a patent may be granted “(a) primarily to the inventor or joint inventors; (b) “to any person or persons who …, (c) the successor or successors in title of any person or persons mentioned in paragraph (a) or (b) above”, but “to no other person”. As Lord Hoffmann explained in Yeda Research and Development Company Ltd v Rhone-Poulenc Rorer International Holdings  UKHL 43, this is “an exhaustive code”.
In Arnold LJ’s view, it was clear from this code that category (a) must consist of a person or persons, just as much as categories (b) and (c) do. Section 7(4) creates a presumption that “a person who makes an application for a patent shall be taken to be the person who is entitled under subsection (2) above to be granted a patent”. Again, only a person could be entitled under s 7(2), and thus only a person could fall within paragraph (a).
This view was further supported, Arnold LJ said, by various other sections of the 1977 Act, which consistently refer to “person” or “persons” in connection with the inventor or the invention. The IPO and the judge were therefore correct to hold that DABUS did not qualify as an “inventor” within the meaning of the 1977 Act because it was not a person.
Entitlement to apply through ownership
Arnold LJ said that the starting point was that “an invention is a piece of information” (Merrell Dow Pharmaceuticals Inc v HH Norton & Co Ltd  RPC 76) and that there is no property in information even if it is confidential (as has been found in numerous cases). In Arnold LJ’s view, there were good reasons of principle and policy for this rule and “it would have alarming consequences if there was property in information”.
As for s 7(2)(b), which speaks of “the whole of the property in [the invention]”, the parties agreed that the “property” referred to is the right to apply for (and, if the invention is found to be patentable and the other statutory requirements are complied with, to obtain) a patent in respect of that invention i.e., the entitlement to file an application. Although that right can be transferred, as s 7(2)(c) makes clear, it is only a right as against persons who derive knowledge of the invention from the inventor. In Arnold LJ’s view, “property” referred to in s 7(2)(b) was well described in Yeda as “a sort of inchoate property in the invention”.
Dr Thaler relied on the common law of accession to argue that he had acquired the right to be granted patents for inventions made by his machine as its owner. Arnold LJ rejected this, finding that this rule only applied to tangible rights and that there was 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 contended, and certainly no rule that the property contemplated by s 7(2)(b) in an invention created by a machine was owned by the owner of the machine. Accordingly, the hearing officer and the judge were correct to hold that Dr Thaler was not entitled to apply for patents.
According to Nippon Piston Ring Co Ltd’s Application  RPC 120, it is not the Comptroller’s function to examine statements of inventorship and entitlement filed by the applicant pursuant to s 13(2) to determine whether they are well-founded. Provided that the applicant complies with the requirements of “identifying the person or persons whom he believes to be the inventor or inventors” and, where applicable, “indicating the derivation of his right … to be granted the patent”, then the application must proceed.
However, Nippon Piston also confirmed that the requirement imposed by s 13(2)(b) could not be ignored and that, if it was not complied with, then the application must be deemed withdrawn.
Dr Thaler had not identified “the person or persons whom he believes to be the inventor or inventors” as required by s 13(2)(a). On the contrary, he had deliberately identified a non-person as the inventor. The fact that he may genuinely have believed that DABUS was the inventor was irrelevant. The answer he gave to the question was a legal impossibility. This analysis did not require the Comptroller to determine whether the answer given was factually accurate, but to take it at face value.
Dr Thaler had also failed to identify “the derivation of his right … to be granted the patent”. He had simply asserted that it was sufficient that he owned DABUS. As a matter of law, that was incorrect. Again, this analysis did not require the Comptroller to determine whether the answer given was factually accurate, but to take it at face value.
Accordingly, it followed that on the face of the application forms he had filed, Dr Thaler did not comply with either of the requirements laid down by s 13(2), and the inevitable consequence was that the applications were deemed to be withdrawn. This did not introduce a new, non-statutory ground for refusing patent applications. On the contrary, it gave effect to the statutory requirements that: (i) the inventor must be a person; and (ii) an applicant who is not the inventor must be able, at least in principle, to found an entitlement to apply for a patent in respect of the invention.
Arnold LJ concluded, therefore, that the IPO and the judge had been correct to hold that both applications were deemed to have been withdrawn. The appeal was dismissed.
The decision is notable in that much of the formal analysis of the operation section 13 is first set out by Birss LJ, notwithstanding that it falls within the dissenting part of the judgment. While all three judges agreed that an inventor must be a person within the meaning of the Patents Act 1977, Birss LJ did not agree with Arnold LJ’s conclusion on the operation of s.13. Drawing on the 1970 report from the Banks Committee on the British Patent System, Birss LJ was of the view that the purpose of s13(2) is “simply to give the Comptroller information which will be made public… and is not to require or facilitate an examination [by the Comptroller] of the applicant’s claimed right to be granted a patent.” By giving his genuine belief, Birss LJ was of the view that Dr Thaler has complied with his legal obligation under s.13(2).
Whether the divergence of views in the Court of Appeal will motivate an appeal to the Supreme Court remains to be seen. But given the proceedings form part of a global initiative to establish a right for artificial intelligence to be recognised as an inventor, the prospects of such an appeal cannot be discounted.
(Stephen Thaler v Comptroller General of Patents Trade Marks and Designs  EWCA Civ 1374 (21 September 2021) — to read the judgment in full, click here).