More on DABUS – this time in Old Blighty

Ann Dufty, whom many of you will know, has pointed out to me that Dr Thaler’s lack of success in the UK was not limited “merely” to rejection by UKIPO. Dr Thaler’s patent application has been rejected by Marcus Smith J sitting in the High Court of England and Wales.

Under the Patents Act 1977 (UK) s 7(2) is in similar terms and, one might say, to the same effect as s 15 of the Australian Act:

(1) Any person may make an application for a patent either alone or jointly with another.

(2) A patent for an invention may be granted –

(a) primarily to the inventor or joint inventors; 
(b) in preference to the foregoing, to any person or persons who, by virtue of any enactment or rule of law, or any foreign law or treaty or international convention, or by virtue of an enforceable term of any agreement entered into with the inventor before the making of the invention, was or were at the time of the making of the invention entitled to the whole of the property in it (other than equitable interests) in the United Kingdom; 

(c) in any event, to the successor or successors in title of any person or persons mentioned in paragraph (a) or (b) above or any person so mentioned and the successor or successors in title of another person so mentioned; and to no other person.

(3) In this Act ‘inventor’ in relation to an invention means the actual deviser of the invention and ‘joint inventor’ shall be construed accordingly.

(4) Except so far as the contrary is established, 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 and two or more persons who make such an application jointly shall be taken to be the persons so entitled.”

Sub-section 7(3) does not have an obvious counterpart in the Australian legislation but, DABUS aside, one would think Australian law is to the same effect. Putting to one side the question whether or not an AI can be an inventor, Australian law would consider the person who made the invention the inventor.[1]

In the English case, Dr Thaler’s substantive arguments were essentially the same as those advanced in Australia.

As to the meaning of “inventor”, Marcus Smith J at [45(3)] first noted that Lord Hoffmann in Yeda had agreed with Laddie J’s view that an inventor was a “natural person”:

The inventor is defined in section 7(3) as “the actual deviser of the invention”. The word “actual” denotes a contrast with a deemed or pretended deviser of the invention; it means, as Laddie J said in University of Southampton’s Applications [2005] RPC 220, 234, the natural person who “came up with the inventive concept.” It is not enough that someone contributed to the claims, because they may include non-patentable integers derived from prior art: see Henry Brothers (Magherafelt) Ltd v Ministry of Defence [1997] RPC 693, 706; [1999] RPC 442. As Laddie J said in the University of Southampton case, the “contribution must be to the formulation of the inventive concept”. Deciding upon inventorship will therefore involve assessing the evidence adduced by the parties as to the nature of the inventive concept and who contributed to it. In some cases this may be quite complex because the inventive concept is a relationship of discontinuity between the claimed invention and the rior art. Inventors themselves will often not know exactly where it lies.

Marcus Smith J then noted that he had not been cited any authority which explained why inventors were confined to natural persons only. His Lordship said at (a):

There is no authority to which I was referred or which I have myself been able to find which explains why the inventor is limited to natural persons only, as opposed to including also legal persons. Whilst one can see the need to limit Class (a) and so the term “inventor” to someone having personality, the exclusion of legal persons from the definition seems less clear-cut. The 1977 Act could, after all, have explicitly referred to “natural persons” rather than just the “inventor”.

Next his Lordship pointed out that DABUS was not, on any view, a person. Then, in contrast to Beach J at [135] – [145], Marcus Smith J considered that the requirement for a valid patent to have an inventive step was decisive:

It seems to me that, when once the notion of an “inventive step” is factored in, the restriction of the term “inventor” to natural person becomes inevitable. An “invention” by definition[29] must involve an “inventive step”, which is something “not obvious to a person skilled in the art”.[30] It is difficult to see how an inventive step can conceived of by a corporation – which must act through agents – without also striking one of those agents. In other words, the inventive step in the mind of a natural person is attributed to the corporation, which only has the inventive step in its “mind” by virtue of such attribution.[31] There is some sense in keeping the definition of inventor close to that which must arise out of the mind of an individual.

Accordingly, DABUS was not an inventor for the purposes of UK law.

Thaler v The Comptroller-General of Patents, Designs and Trade Marks [2020] EWHC 2412 (Pat)

  1. University of Western Australia v Gray [2009] FCAFC 116; 179 FCR 346 at [248] citing [Polwood Pty Ltd v Foxworth Pty Ltd][polworth] (2008) 165 FCR 527. For the counterparts to s 7(1) of the UK Act see ss 29 and 31.  ?