UKSC rejects Thaler and DABUS

The United Kingdom Supreme Court has ruled that DABUS is not an inventor for the purposes of UK patent law and so Dr Thaler’s applications for a patent claimed to be invented by DABUS have failed.

You will recall that Dr Thaler has applied in the UK (and many other parts of the world) for the grant of patents in his name for inventions said to have been generated by a machine acting autonomously and powered by the artificial intelligence, DABUS.

Section 7 of the UK Patents Act 1977 provides in part:

7 Right to apply for and obtain a patent.

(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.

Further, section 13 reinforced the centrality of the position of “the inventor” in the scheme of the Act.

Lord Kitchin pointed out that s 7(2) read with s 7(3) provides an exhaustive code for determining who is entitled to a patent. And, just like s 15(1) of the Patents Act, that is the inventor or someone claiming through the inventor.

Unlike the Australian Act, section 7 of the UK Act also includes s 7(4) which defines the inventor as “the actual deviser of the invention”.

Unlike the approach taken by the Australian High Court, Lord Kitchin (with whom Lords Hodge, Hamblen, Leggatt and Richards agreed) considered it was entirely proper for the Comptroller-General to take Dr Thaler’s statements at face value.

Accordingly, at [56], Lord Kitchin ruled that an inventor for the purposes of the Patents Act 1977 must be a natural person and, as DABUS was not a person, it was not the inventor.

In my judgment, the position taken by the Comptroller on this issue is entirely correct. The structure and content of sections 7 and 13 of the Act, on their own and in the context of the Act as a whole, permit only one interpretation: an inventor within the meaning of the 1977 Act must be a natural person, and DABUS is not a person at all, let alone a natural person: it is a machine and on the factual assumption underpinning these proceedings, created or generated the technical advances disclosed in the applications on its own. Here I use the term “technical advance” rather than “invention”, and the terms “create” or “generate” rather than “devise” or “invent” deliberately to avoid prejudging the first issue we have to decide. But it is indisputable that DABUS is a machine, not a person (whether natural or legal), and I do not understand Dr Thaler to suggest otherwise.

As in the Australian cases, Dr Thaler advanced an alternative claim based on the “doctrine of accession”. Thus, Dr Thaler claimed he was entitled to the patent as the owner of DABUS and so entitled to any fruits of its production.

At [83], Lord Kitchin explained Dr Thaler’s contention based “purely” on ownership of the machine:

The DABUS inventions are, he says, the fruits of (in the sense they were produced by) the DABUS machine that he owns and further, that DABUS was designed to make inventions and so these fruits were by no means unexpected. He also contends that he was and remains the first person to possess the inventions and this provides a proper basis for their ownership. In short, he contends that he derived title by operation of a rule of law (the doctrine of accession) that satisfied the terms of section 7(2)(b) of the Act and conferred on him the right to apply for and secure the grant of patent protection for any inventions made by DABUS.

This contention failed. First, as DABUS was not an inventor, at [84] it gave rise to no rights which could be claimed. That was sufficient for the application to fail.

Secondly, in any event, Dr Thaler’s invocation of the doctrine of accession was entirely misplaced. The doctrine of accession applied to new tangible property (e.g. a calf) produced by an existing tangible property (e.g. a cow), not intangible property such as inventions. At [88] – [89], Lord Kitchin explained:

We are not concerned here with a new item of tangible property produced by an existing item of tangible property, however. We are concerned with what appear (and which for present purposes we must assume) to be concepts for new and non-obvious devices and methods, and descriptions of ways to put them to into practice, all of which, so Dr Thaler maintains, have been generated autonomously by DABUS. There is no principled basis for applying the doctrine of accession in these circumstances.

For these reasons and those given by the Court of Appeal, I am satisfied that the doctrine upon which Dr Thaler relies here, that of accession, does not, as a matter of law, operate to confer on him the property in or the right to apply for and obtain a patent for any technical development made by DABUS.

As the Comptroller-General was entitled to take Dr Thaler’s claims at face value, the Comptroller-General was entitled to reject the applications as they were obviously defective: they did not identify anyone who could be the inventor or any basis on which Dr Thaler could claim to derive title from an inventor.

It should be noted that Lord Kitchin was at pains to point out that the Court was concerned with a narrow question: the meaning of section 7 and associated provisions in the UK Act. It was not concerned, he considered with broader, policy questions. His Lordship explained at [48] – [50]:

The Comptroller has emphasised, correctly in my view, that this appeal is not concerned with the broader question whether technical advances generated by machines acting autonomously and powered by AI should be patentable. Nor is it concerned with the question whether the meaning of the term “inventor” ought to be expanded, so far as necessary, to include machines powered by AI which generate new and non-obvious products and processes which may be thought to offer benefits over products and processes which are already known.

These questions raise policy issues about the purpose of a patent system, the need to incentivise technical innovation and the provision of an appropriate monopoly in return for the making available to the public of new and non-obvious technical advances, and an explanation of how to put them into practice across the range of the monopoly sought. It may be thought that the rapid advances in AI technology in recent times render these questions even more important than they were when these applications were made.

This appeal is concerned instead with the much more focused question of the correct interpretation and application of the relevant provisions of the 1977 Act to the applications made by Dr Thaler. This was the approach taken by the Comptroller, the High Court and the Court of Appeal, and rightly so.

Dr Thaler having failed to identify an inventor through whom he could claim entitlement, the Comptroller-General had been right to deem the applications withdrawn.

Thaler v Comptroller-General of Patents, Designs and Trade Marks [2023] UKSC 49 (20 December 2023)

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