Thaler v Comptroller-General of Patents, Designs and Trademarks [2023] UKSC 49

Background & Proceedings

This appeal examines two applications that Dr Stephen Thaler, the Appellant, filed on 17  October 2018 and 7 November 2018 for the grant of patents under the Patents Act 1977 (the “PA”), describing that the inventions were created by the machine, DABUS, powered by artificial intelligence and that the Appellant withholds the right to obtain the grant of the patents as he was the owner of DABUS, but not the inventor of the inventions. 

The United Kingdom Intellectual Property Office (the “UKIPO”), on 19 November 2018 and 27 November 2018, requested the Appellant to provide a statement of inventorship and an indication of how he derived the right to be granted the patents within sixteen months (the “Period”) in accordance with section 13(2) the PA and rule 10(3) of the Patent Rules 2007 (the “PR”). Dr Thaler maintained his position mentioned in the applications, in which the UKIPO responded that he had not complied with the PA and was requested to correct the deficiencies through the replacement forms. Instead, Dr Thaler, through his patent attorney, stated that the forms were correctly filed in which the PA and PR requirements had been met, argued that the inventorship requirement was merely procedural, enclosed amended forms maintaining their position on inventorship, and sought for hearing if DABUS was not considered an inventor. 

As the objection was sustained, a hearing determined that the Appellant’s applications must be withdrawn as DABUS cannot be recognised as an inventor within the PA, and the Appellant cannot apply for the grant of patents as he mentioned that DABUS made the inventions independently, and the Appellant was unable to indicate any person to be an inventor nor how he retains the right to obtain the grant of patents. The Comptroller-General of Patents, the Respondent, through the Hearing Officer, held that Dr Thaler’s applications would be withdrawn after the expiry of the Period. Thereafter, Dr Thaler appealed to the High Court and the Court of Appeal, where a majority agreed with the Respondent, whilst Birss LJ disagreed to allow the applications for the grant of patents. The Justices in the Supreme Court, namely Kitchin, Hodge, Hamblen, Leggatt and Richards, came to a unanimous decision in dismissing the appeal that the Respondent was rightly entitled to withdraw Dr Thaler’s applications upon expiry of the Period.

Judgment

The Justices in the Supreme Court turned on three questions, namely what is the scope and meaning of “inventor” in the PA, whether the Appellant was an owner of inventions made by DABUS and entitled to apply and receive the grant of patents, and whether the Hearing Officer was rightly entitled to state that Dr Thaler’s application would be withdrawn at the upon expiry of the Period.

The first question explores Sections 7 and 13 of the PA, where the Supreme Court sustains that an inventor must be a natural person who devised an inventive concept, utilising Rhone-Poulenc Rorer International Holdings v Yeda Research and Development [2007] UKHL 43. Section 7(2) and (3) of the PA further elucidate to whom a patent may be granted, whereby the inventor must be a natural person, and the person to whom the patent can be granted must be through the inventor. Section 13 of the PA is another hindrance to Dr Thaler’s arguments, as it provides no insinuation that a machine can be an inventor. 

The second question investigates whether Dr Thaler was allowed to apply and receive the patent grant for inventions through his machine ownership. The Supreme Court rejects this argument as section 7 of the PA necessitates an inventor, which must be a person, not a machine. Additionally, Dr Thaler does not fall under Section 7(2)(b), which states that a patent may be granted to any person by virtue of laws, conventions or agreements before or at the time of the making of the invention entitled to the whole property, or under Section 7(2)(c) that allows successors of the inventor or joint inventors or successors of those mentioned in Section 7(2)(b). The Appellant responds to the above contention asserting that there was property in the invention, and since he is the owner, he has the right to be granted the patents for the inventions. The Supreme Court holds that it wrongly assumes that the machine is an inventor and incorrectly diagnoses an invention as tangible property that the title can pass.

The third and final question, the Hearing Officer was rightly entitled to affirm that the withdrawal of the application was imminent upon expiry of the Period, as the Appellant did not satisfy the requirements under the PA by failing to indicate persons believed to be inventors of the inventions in the applications, and by providing improper reasons that solely his ownership in the machine allows full entitlement to the grant of the patents. 

Commentary 

The Supreme Court noted that this decision was of utmost importance in determining that Dr Thaler was attempting to establish through his worldwide applications that artificial intelligence-operated machines can independently make inventions. Their owners can obtain the grant of patents for the machines’ inventions. The Justices in the Supreme Court stated that the decision is not to be taken as answers to policy questions about the purpose of the patent system, whether the term “inventor” must be construed in expanse, and whether machines powered by artificial intelligence should be deemed patentable. This judgment could demonstrate the Supreme Court’s yielding nature to solely address the issues through the PA’s meaning in determining its outcome, despite the limited success Dr Thaler has acquired through other patent offices worldwide.

Written by Prisha Budhrani