Do AIs dream of…inventions?

Court of Appeal rules that Artificial Intelligence “DABUS” cannot be the inventor on a UK Patent.

The Court of Appeal has held by a majority verdict (LJ Birss dissenting) that an Artificial Intelligence (“AI”) device created by scientist Dr Stephen Thaler could not be treated as the inventor on two patent applications filed by Dr Thaler with the UK Intellectual Property Office (“IPO”) in 2018 and 2019, and that therefore Dr Thaler could not derive title to any resulting patent(s) by operation of law.

The AI, known as DABUS (“Device for the Autonomous Bootstrapping of Unified Sentience”) which has been described as a “type of connectionist artificial intelligence” and which works by harnessing the learning and processing power of a number of connected neural networks had independently devised two potentially patentable inventions in relation to which, Dr Thaler had asserted, the AI had itself identified the novelty of its ideas before any natural person had done so.

Dr Thaler then filed patent applications for these inventions with the UK IPO (and in other jurisdictions) naming DABUS as the inventor, and claiming his right to be granted the patent “by ownership of the creativity machine DABUS.

The IPO responded that Dr Thaler had to name a “person” on his application forms as the inventor and explain how his right to ownership of the patent derived from that “person.”  Dr Thaler did not amend his applications substantially, and the IPO deemed them to be withdrawn, on the basis that the requirements of s.13(2) of the Patents Act 1977 (“the Act”) were not satisfied.

Section 7 of the Act says that “Any person may make an application for a patent either alone or jointly with another” and gives some examples of that, but of course the Act was not drafted to anticipate AIs such DABUS.

Last year Mr Justice Marcus Smith upheld the IPO Hearing Officer’s decision and Dr Thaler took the case to the Court of Appeal which was asked to consider 3 questions:

  1. Must an inventor be a “person?”
  2. Was Dr Thaler entitled to apply for a patent in respect of an invention created by DABUS?
  3. Had the IPO acted correctly in responding to Dr Thaler’s patent applications?

In relation to the first question, the Judges unanimously agreed that an inventor had to be a natural person and that therefore under the Act the patent system in the UK cannot currently recognise an AI as the inventor.

Addressing the second question, the Court noted that Dr Thaler on his own applications had accepted that he was not the inventor (perhaps because to do so would have undermined the very purpose of DABUS, whose powerful AI he has sought to demonstrate), and so could not claim the patent under s.7(2)(a). Nor was he a successor in title who could claim under s.7(2)(c).

Instead he had sought to rely on s.7(2)(b) which refers to an entitlement “by virtue of any enactment or rule of law” and argued that by the common law principle of accession (in simple terms the principle that “if I own the tree, then I also own its fruit”) as the owner of DABUS he was entitled to any patent granted over DABUS’ invention.

The Court (LJ Arnold giving the leading judgment) drew the distinction between intangible property (the invention itself - which is essentially a piece of information) and tangible property (the right to apply for a patent in the invention) and found that the reference to “property” in s.7(2)(b) meant the latter, and that the law of accession did not apply in the way argued by Dr Thaler to intangible property over which there was not necessarily exclusive possession (absent a granted patent, in this case).

Therefore, a majority of the Court of Appeal Judges (Birss LJ dissenting due to his analysis of the third question) held that Dr Thaler was not entitled to apply for a patent in respect of an invention created by DABUS.

On the final question, Lord Justice Birss analysed the case law and the purpose of s.13(2) of the Act which he held was to ensure that genuine errors made in good faith in identifying the inventor or the basis for the applicant’s title shouldn’t prevent an applicant from obtaining a patent or render any patent then granted liable to revocation.  Its purpose was not to enable the IPO to investigate the factual correctness of the answers given by the applicant in its application forms, which in his view is what had occurred in this case.

As he pointed out in his judgment, being granted a patent is no absolute guarantee that your title to that patent is good, and the system is such that it remains open for someone with good evidence to demonstrate otherwise to make their case to the IPO pre or post grant, seeking the rectification of the Register of Patents.

Lord Justice Arnold and Lady Justice Laing disagreed that the hearing officer had “investigated the factual correctness” of the applications in this case, but had merely noted that that the application did not appear to align with the requirements of the Act (as per their answers to the previous questions in this case) and Dr Thaler not having responded to the IPO’s request for additional or alternative information, had treated his applications as withdrawn.

Conclusions

This case illustrates well how difficult it can be for the law to accommodate the facts in rapidly evolving fields of technology such as AI, and LJ Birss observed that Dr Thaler’s case appeared in parts to be “put on the basis of what the law ought to be rather than what it was.”

LJ Birss’s approach to the third question could have resulted in a granted patent, but one which would have been extremely vulnerable to challenge had it been later identified that DABUS could not properly be considered an “inventor” within the meaning of the Act - any patent thus having been granted to Dr Thaler on a faulty premise

LJ Birss and indeed the hearing officer and first instance Judge before him appeared to hint that an alternative pragmatic approach might have been for Dr Thaler to have named himself as the inventor in making the applications, but as some commentators have noted, this would also have been unsatisfactory (certainly for Dr Thaler) overlooking as it would the success of his AI and again creating a potential patent highly vulnerable to challenge and revocation

The UK government is presently in the midsts of a consultation exercise over the role of AI in creating intellectual property and it remains to be seen whether further case law OR legislative changes prove to be the means by which this developing “mismatch” between the law and the world of technology can best be addressed.

Posted on: 23/09/2021

This article is for general guidance only. It provides useful information in a concise form. Action should not be taken without obtaining specific legal advice.

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