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We have previously reported (UK, Europe, US, Australia) on the efforts in many countries by Dr Stephen Thaler to file patent applications which name a computer system (“DABUS”) as the inventor. In September 2020, the High Court upheld the UK IPO’s decision to deem Dr Thaler’s applications withdrawn for failure to properly indicate an inventor (because an inventor was required to be a natural person and also because a computer could not transfer rights in an invention to a person because it was not entitled to own them to begin with). Dr Thaler and his legal team obtained permission to appeal this decision to the Court of Appeal, which handed down its judgment on 21 September.
The Court of Appeal decision upholds the decisions of the UK IPO and the High Court in deeming Dr Thaler’s applications withdrawn for failure to comply with the formal requirements of the Patents Act 1977, specifically the requirement in section 13 to “identify a person or persons” who are believed to be the inventor(s) and “indicate the derivation of [the applicant’s] right to be granted the patent”. However, the decision was a 2-1 majority split, with Birss LJ indicating that he would have allowed the appeal, but being outnumbered by his fellow judges (Arnold LJ and Laing LJ).
Birss LJ and Arnold LJ, both specialist IP barristers and judges by background, provide substantial analysis and explanations of the current law in the UK relating to the requirements for inventors to be identified in patent applications. Notably, this background appears to have resulted more from their own personal research than the submissions from the parties. Despite their disagreement on the final outcome, both reach the conclusion that an “inventor” must be a “person”, thus agreeing with the decisions under appeal as well as those in the US and EPO and differing from the recent decision in Australia.
Arnold LJ and Laing LJ conclude that the fact that DABUS cannot be an “inventor” for the purposes of the Act means that the Statements of Inventorship (Patents Forms 7) filed by Dr Thaler are defective because, rather than “identifying the person or persons whom he believes to be the inventor or inventors”, Dr Thaler deliberately identified a “non-person”. Similarly, in their view, the forms failed to identify the derivation of Dr Thaler’s right to be granted the patent because they simply contained an assertion that it was sufficient that Dr Thaler owned DABUS. Arnold LJ considered this latter point at length (including going back to the 1766 edition of Blackstone’s Commentaries on the Laws of England) and concluded that there is no legal route to entitlement of intangible property through ownership of a tangible item and therefore this not a valid statement of the derivation of the right to be granted a patent.
Thus these judges concluded that, whilst it is not the UK IPO’s function to examine statements of inventorship and entitlement to determine whether or not they are factually correct, the Act does impose a requirement to name someone (who must be a natural person) as an inventor and to give a legally valid indication as to how the applicant derives their title from the inventor. As the forms filed did neither, the Hearing Officer was correct to consider that the requirements of s. 13 of the Patents Act were not complied with and the statutory consequence of the applications being withdrawn was upheld.
Birss LJ differs from his fellow judges primarily in his views about the extent to which the UK IPO is obliged (or even permitted) to examine the content of the forms filed. In Birss LJ’s view, neither the fact that Dr Thaler has not identified any “person” as the inventor nor the fact that his claim to entitlement may be incorrect as a matter of law is relevant. Provided that the necessary statements have been made, the UK IPO should not examine to any extent whether they are correct. In Birss LJ’s view this is consistent with the change introduced by the Patents Act 1977 to remove the requirements of the previous patent law in the UK that the “true and first inventor” was named and that that inventor had to assent to the filing of the patent application (in a similar practice to the filing of Inventor Declarations currently required in the US and several other countries). Indeed, Birss LJ argues that to allow examination of the correctness of the information provided would risk a return to the situation where patent applications could be refused or revoked for a factually incorrect designation of inventorship, which goes contrary to the legislative history of the inventorship requirements of the current Patents Act.
Given the obsession of the DABUS team with this topic, it seems extremely likely that permission to appeal this decision to the Supreme Court will be sought. Such a third level of appeal would be extremely unusual, but the divergence of views in the Court of Appeal may support that application.
For further information contact Stephen Hodsdon or your usual J A Kemp adviser.