Access Denied: UKSC Dismisses DABUS Appeal

Robot in Court Disappointed in Judgement — **This morning, the UK Supreme Court (UKSC) handed down** **their judgment** **in the DABUS appeal.**

**The UKSC was unanimous in its decision that the appeal should be dismissed.**

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Summary

The UK Supreme Court (UKSC) – the final appellate court in the United Kingdom – has dismissed the appeal of Dr Thaler in relation to the DABUS case. The UKSC held that there is no legal basis in UK patent law for a machine to be named as inventor, nor is there any legal basis on which Dr Thaler could claim he derived the rights in the invention by virtue of his ownership of that machine (DABUS).

This judgement does not come as a surprise. While legally interesting as a test case, the role of the courts in the UK is to interpret law, not create new law. The Patents Act 1977 was not written by a mind considering the possibility of autonomous invention by a machine, and the legal framework based on that act presupposes that an inventor must be a human being.

If monopoly rights are to be granted for inventions devised autonomously by machines in the future, then it would be a matter for Parliament to change the existing legal framework.

Background

This case broadly relates to whether artificial intelligence (AI) can be an inventor for the purposes of UK patent law. The case was brought by Dr Stephen Thaler (‘Dr Thaler’), who filed two patent applications directed to inventions he alleges were devised solely by an AI called DABUS (Device for the Autonomous Bootstrapping of Unified Sentience). For interest, the two patent applications related to a food container (GB2574909) and a pulsing light beacon (GB2575131).

Dr Thaler made clear from the outset that he was not an inventor himself, indicating on Patent Form 1 that while he was the applicant, he was not the inventor. When submitting the details of inventorship on Patent Form 7, he indicated that DABUS was the inventor and that Dr Thaler had derived the right to the invention by virtue of owning DABUS.

In their examination of the patent application, the UK Intellectual Property Office (UK IPO) were of the view that the requirement to identify the inventor required by the Patents Act 1977 (the ‘1977 Act’) had not been satisfied. As a result, the patent applications were to be deemed withdrawn.

Dr Thaler requested a hearing before the UK IPO on this point. In decision O/741/19, the Comptroller of the UK IPO decided that the naming of DABUS as the inventor did not meet the requirement to name the inventor. The decision also noted that even if the decision was wrong on this point, the need to show how Dr Thaler derived the right from DABUS had not been satisfied. An appeal to the High Court was not successful.

Dr Thaler then further appealed to the Court of Appeal, where the case was heard by Lords Justices Arnold, Elisabeth Laing, and Birss. The Court of Appeal dismissed Dr Thaler's appeal, finding that the earlier decision of the UK IPO was correct. Interestingly, the decision of the Court of Appeal was not unanimous. While Arnold LJ and Elisabeth Laing LJ agreed that the appeal should be dismissed, Birss LJ, dissenting, came to the view that the appeal should be allowed and the applications not be deemed withdrawn.

The majority decision by the Court of Appeal found that DABUS did not qualify as an inventor because:

an inventor was required to be a person;
there was no general rule of law that any intangible property (including an invention) created by a machine was the property of the machine or the owner of the machine; and
the Comptroller had been right to find the applications would be taken to be withdrawn because Dr Thaler had not identified the inventor or properly identified how he derived the right to be granted the patents (his assertion that it was sufficient that he owned DABUS being held to be wrong in law).

Dr Thaler was given leave to appeal to the UKSC.

The Case Before the UKSC

A hearing was held by the UKSC on 2 March 2023, with the case being heard by Lords Hodge, Kitchin, Hamblen, Leggatt, and Richards.

There were three issues on which the judgement turned:

The scope and meaning of “inventor” in the 1977 Act
Was Dr Thaler nevertheless the owner of any invention in any technical advance made by DABUS and entitled to apply for and obtain a patent in respect of it?
Was the Hearing Officer entitled to hold that the applications would be taken to be withdrawn?

View of the UKSC

Issue 1

Issue 1 turns on the question of whether the term “inventor” encompasses machines, the UKSC held that the answer to this to be ‘no’. The UKSC held that sections 7 and 13 of the 1977 Act leave room for but a single interpretation – that the inventor must be a natural person. It follows that as DABUS is not a person at all, let alone a natural person, it cannot be an inventor.

Expanding on this, the UKSC turn to other sections of the 1977 Act:

· section 2(4) – protection against prior publication in breach of confidence (section 2(4));

· section 8 – relating to pre-grant entitlement disputes; and

· section 37 – relating to post-grant entitlement disputes

The references to these sections are used to support the UKSC’s view that the 1977 Act provides that rights are only derivable through the inventor and that rights are only granted or transferrable to persons with legal personality, which DABUS is not.

Issue 2

On Issue 2, the UKSC held that the 1977 Act provides a complete code on who has the right to apply for and to be granted a patent. This code, in brief, is that the right belongs firstly to a) the inventor; or b) in preference to the inventor, a person who is entitled to the whole of the property in the invention; or c) the successor in title of a) or b).

In Dr Thaler’s case, he does not meet the requirements of any of a), b), or c). It is easy to dismiss a) – by Dr Thaler’s own argument, he is not the inventor.

Regarding b), Dr Thaler argued that the doctrine of accession should apply – the argument being that as he owns the machine, he also owns the fruits of that machine’s labours. The UKSC held that this doctrine did not apply however, as that doctrine relates to tangible property and there is no legal basis for applying that to the rights in an invention.

It follows that c) also does not apply to Dr Thaler.

The UKSC therefore reached the conclusion that there is no inventor through which Dr Thaler can legally derive the right to the invention.

Issue 3

Finally, on Issue 3, the UKSC held that the UK IPO Hearing Officer was correct to find the applications as deemed withdrawn, finding it straightforward to reach this conclusion. The consequences for not identifying the inventor and the means through which the applicant derives its right (if it is not itself the inventor) are clear – the application is to be deemed withdrawn.

Analysis

This judgment adds the UK to the growing list of jurisdictions in which the legal process has run its course and found against Dr Thaler.

It is worth bearing in mind that this case is not concerned with the broader question of whether a machine is even capable of autonomous invention as contended by Dr Thaler. There is much evidence and discussion in different industries of AI being used as an assistive tool, however there has to date not been much evidence of autonomous invention by a machine alone, without human involvement. The present case does not turn on that point.

The case also did not need to address whether inventions made autonomously by machines should be patentable – this is a question of policy. The case is narrowly focussed on compliance with the formal requirements of the 1977 Act alone.

The conclusion reached by the UKSC is unsurprising, particularly given the interpretative role of the courts in the UK legal system. The UKSC was tasked with answering the questions within the current legal framework of the 1977 Act – once that is borne in mind, it would seem inevitable that Dr Thaler’s appeal would be dismissed.

The positions that Dr Thaler’s team put forward were compelling, and certainly highlight an issue that is likely to become more prominent in the future as AI is increasingly used as a tool for invention discovery (e.g. for pharmaceuticals). This touches on more than patent law, however, and in part speaks to more wide-reaching legal questions around AI that may need answering in due course.

Perhaps a more political and philosophical question for ourselves as a society is ‘What position do we want to take on incentivizing invention by machines?’. If we take as read that it is possible for a machine to invent without human involvement (and the jury is still out on this), do we want to grant a monopoly right for that invention? What would the consequences of doing this (or not doing this) be?

Stay tuned for a future article that will consider these questions in more detail.