Thaler
v. Comptroller-General of Patents
-Rishiraj Chandan
Brief
overview
The
UK Supreme Court case of Thaler v. Comptroller-General of Patents concerned two
patent applications made under the UK Patents Act of 1977 for a product and
process that were invented by an AI-powered machine named DABUS, which Dr.
Stephen Thaler maintained ownership of. The issue in question was whether a
machine can be designated as an inventor under the law and who should be
considered the owner of the patent.
Thaler
argued that, since he was the owner of the AI system that generated the
invention, he should be considered an inventor and entitled to apply for
patents for the resulting invention. However, the Court of Appeal ruled that
the machine could not be designated as an inventor under the law, and Thaler
was not entitled to make the patent applications. As a result, the applications
must be taken to have been withdrawn.
The
UK Supreme Court upheld the Court of Appeal's decision and dismissed Thaler's
appeal. The court held that only the natural person or persons who contributed
to the invention can be designated as an inventor under the law, and that this
does not include machines. The court found that the purpose of the Patents Act
is to provide legal protection for human inventions and that the language and
purpose of the Act does not support an interpretation that would allow a
machine to hold a patent.
The
court acknowledged that the legal definition of 'inventor' under patent law
needs to be adapted to fit the emerging world of AI-powered inventions. It also
noted that other countries' patent offices, such as the US and Australia, have
proposed solutions such as using a legal entity or the programmer as the
inventor when a machine creates an invention. However, the judges emphasized
that it should be the role of the UK parliament to address this legislative gap
and not the courts to try to fill it.
The
judgment also explored the relationship between the study of AI and patent law
and discussed how AI can assist in areas like prior art searching, patent
drafting, and risk assessment. Still, it is suggested that the issues arising
from the current case must be resolved before the decade-long trend of
exponentially growing patent filings and technical advances generated by
machines can no longer be ignored.
The
case highlights the need for policymakers to address issues of AI-generated
inventions and the intellectual property rights that they entail as AI's use in
the innovation process only continues to grow; with this growth, there will be
an increasing need to ensure that AI's invention is reconciled within the legal
framework, and the desire to safeguard intellectual property is preserved.
Petitioner
Arguments
The
petitioner's argument was that he was entitled to pursue the patent
applications because he was the owner of DABUS, the machine that created the
invention. He claimed that AI systems can make inventions, and their owners can
apply for and secure the grant of patents for those inventions. Dr. Thaler also
argued that the mention of the inventor in the patent application was just a
procedural requirement that had been satisfied, and that the machine was
entitled to be designated as an inventor.
However,
the court rejected the petitioner's arguments on the basis of the statutory
scheme that governs the right to apply for and secure the grant of a patent for
an invention under the 1977 Act. The court held that Section 7 of the Patents
Act 1977 establishes that a patent for an invention may be granted to an
inventor who is a person. The court observed that the section makes no
provision for granting a patent to an AI machine.
Furthermore,
the court held that Section 13 of the 1977 Act requires that an applicant must
file a statement identifying the inventor or inventors of the invention for
which they are seeking a patent. By identifying the inventor, the applicant
acknowledges that a person made the invention. Thus, a person is required to be
named as an inventor in the patent application. The court pointed out that
there is no provision in the 1977 Act that allows for an AI system to be
designated as an inventor.
Therefore,
the court held that the patent applications made by the petitioner, which
failed to name any person as an inventor, failed to comply with the
requirements of Section 13 of the 1977 Act. As a result, the Court of Appeal
was right to find that the applications were taken to have withdrawn. The court
concluded that Dr. Thaler did not satisfy the requirements of the 1977 Act, and
therefore was not entitled to apply for or obtain patents for the inventions
described in the applications.
Respondents
Argument
There
is no detailed argument presented by the respondents. However, the
Comptroller-General of Patents, Designs, and Trademarks relied on the same
legal interpretation of the requirements of the 1977 Act as the Court of Appeal
endorsed. The hearing officer who initially rejected the patent applications
also supported the interpretation that only a person, and not an AI machine,
can be named as an inventor in a patent application. Furthermore, the High
Court dismissed Dr. Thaler's appeal, accepting the decision of the hearing
officer and the Comptroller.
Thus,
the arguments of the respondents centred on the interpretation of the
provisions of Section 7 and Section 13 of the Patents Act 1977 and the
application of this interpretation to the facts of the case. They argued that
the 1977 Act requires the identification of a person as an inventor, and there
is no provision for granting a patent to an AI machine. The respondents further
asserted that the patent applications made by Dr. Thaler did not comply with
the legal requirements for naming an inventor, which meant that they could not
succeed.
Overall,
the respondents' argument was based on the legal position set out in the
Patents Act 1977 and the well-established legal principles regarding the
identification of inventors in patent applications. In contrast to Thaler's
argument, the respondents emphasized that the Act requires that a person must
be named as an inventor.
Judgement
The
judgement in this case is that the patent applications made by Dr. Stephen
Thaler are to be taken as withdrawn. The judgment was delivered by Lord Kitchin
with whom Lord Hodge, Lord Hamblen, Lord Leggatt, and Lord Richards agreed. The
Court of Appeal's decision was upheld, and the patent applications cannot
proceed.
Lord
Kitchin found that Dr. Thaler's appeal lacked merit, and he supported the
findings of the hearing officer for the Comptroller of Patents, Designs, and
Trade Marks. The judge found that Dr. Thaler did not
satisfy the statutory requirements of the Patents Act 1977 for naming an
inventor in a patent application and for indicating the derivation of his right
to be granted the patents. DABUS, the AI machine, did not qualify as an
inventor within the meaning of the Act because such an inventor had to be a person.
Lord
Kitchin also rejected Dr. Thaler's attempts to rely on the doctrine of
accession to claim that he had ownership of the patent rights on the inventions
created by DABUS. The machine-generated inventions were not considered to be
Dr. Thaler's property automatically.
The
judge emphasized that the question was not whether technical advances generated
by machines could be patented, but whether a machine could be named as the
inventor. The Court recognized the importance of fostering innovation and
technical advances in the digital age but found that the current legislation
did not accommodate the recognition of machines as inventors.
Overall,
the judgment's central reasoning was that the provisions of the Patents Act
1977 do not allow an AI machine to be named as an inventor, and thus the patent
applications were considered non-compliant with regard to these statutory
requirements.
