In the most recent of a series of posts tracking developments of Ryan Abbott’s quests - on behalf of Dr Stephen Thaler - for patent offices globally to recognise DABUS, an AI tool, as the inventor in a patent application, we wondered if we were perhaps beginning to see a shift towards an acceptance of non-human inventors. However, hot on the heels of the recent decision of the district court for the Eastern District of Virginia upholding the USPTO finding that an AI cannot be named as the inventor of a US patent, the English Court of Appeal has also now upheld the High Court and UKIPO decisions that an AI machine cannot be the named inventor for a UK patent.
By way of background to the UK proceedings, Dr Stephen Thaler applied to the Intellectual Property Office to name his AI tool as inventor on the patent. The UKIPO rejected his application, saying only a person or persons can be recognised as an inventor under s13(2) the Patents Act 1977. Thaler appealed to the High Court and lost (see our post here), and subsequently appealed to the Court of Appeal.
In a 2-1 judgment (Lord Justice Arnold and Lady Justice Laing in the majority and Lord Justice Birss dissenting), the Court of Appeal upheld the High Court’s previous ruling and dismissed the appeal. The majority Justices felt the law was clear: the inventor must be a person or persons. As Lady Justice Laing put it: “Only a person can have rights. A machine cannot.”
Lord Justice Birss’ dissent was largely centred around the fact he thought Thaler had done what s13(2) of the Patents Act required – he had “within the prescribed period file[d] with the Patent Office a statement…identifying the person or persons whom he believes to be the inventor or inventors”. If it was Thaler’s genuine belief that DABUS was the inventor of the patent, Birss felt he was entitled to state that on the patent application and so the application should not have been deemed withdrawn by the UKIPO.
We do not yet know whether Thaler will take his case to the UK Supreme Court, but we would certainly not be surprised if he does. Continue to watch this space!
If the inventor is not a person, but a machine, no person has, as a matter of law, a right to apply for a patent in respect of the machine's inventions. It is as simple as that. Whether or not thinking machines were capable of devising inventions in 1977, it is clear to me that Parliament did not have them in mind when enacting this scheme. If patents are to be granted in respect of inventions by machines, the 1977 Act will have to be amended.