No Early Christmas Present for DABUS in the UK

The Supreme Court has now issued its decision in the appeal by Dr Stephen Thaler regarding his UK patent applications which sought to name an artificial intelligence-based machine (“DABUS”) as the inventor. This is the latest in a wide-ranging (and thus far entirely unsuccessful) attempt by Dr Thaler and his legal team to challenge patent systems around the world to allow a machine to be named as an inventor and, by extension, for the owner of that machine (in this case Dr Thaler himself) to be entitled to any patent applications or patents arising from inventions made by the machine.

Dr Thaler’s third and final appeal in the UK may have proceeded with a glimmer of hope, following the split decision of the Court of Appeal (reported here), but ultimately the Supreme Court found that the UK IPO Hearing Officer, High Court Judge and majority of the Court of Appeal were correct in deeming his applications withdrawn for failure to comply with the formal requirements to name an inventor.

Specifically, the Supreme Court held that:

1. 1. An “inventor” under the Patents Act 1977 must be a natural person. Therefore DABUS could not be an “inventor” for the purposes of the Patents Act.
   2. Dr Thaler has never had any right to secure the grant to himself of UK patents based on the activities of DABUS.
   3. The UK IPO Hearing Officer was correct to find that Dr Thaler had not complied with the requirements of the Patents Act to file a statement of inventorship and therefore his applications were correctly deemed withdrawn.

Whilst issue a. has been consistently decided at all levels of this case, issue b. has always appeared the most fundamental flaw. The Supreme Court held, in agreement with other courts around the world, that a machine, such as DABUS, could not own any rights in the alleged inventions and therefore there was no mechanism by which these could pass to Dr Thaler. That position is reinforced by the finding on issue a. as the court considered that the law was clear that tracing a path from the “inventor(s)” is the only mechanism provided for ownership of the right to file and be granted a patent application.

issue c. was the point on which the judges in the Court of Appeal diverged. However, the Supreme Court decision firmly indicates that, although it is not the function of the UK IPO to investigate the correctness of an “apparently genuine statement” by the applicant regarding inventorship and their entitlement to the patent application, they can (and should) take action where those indications are obviously defective or insufficient.

In the end, this case appears best summed up in the words of Laing LJ from the Court of Appeal:

“If patents are to be granted in respect of inventions made by machines, the 1977 Act will have to be amended.”