Does the Qualification of “Inventor” under Patent Law extend to Artificial Intelligence?

A. Introduction

In the Court of Appeal of England and Wales, on 21st September 2021, the decision of Thaler v Comptroller General of Patents Trade Marks and Designs [2021] EWCA Civ 1374 was delivered by the Lord Justice Arnold, Lady Justice Elisabeth Laing, and Lord Justice Birss. Here, the Court of Appeal concluded that because an artificial intelligence machine is not a person, it cannot be considered as an “inventor” for the purposes of Sections 7 and 13 of the UK Patents Act. Furthermore, there was no rule of law that new intangible property produced by existing tangible property belonged to the owner of the tangible property, and certainly there was no rule that property in an invention created by a machine belonged to the owner of the machine in determining whether a person had the right to apply for a patent under Section 7(2)(b). This article will provide a brief overview of the decision.

B. Background Facts

In this case, the proprietor of an artificial intelligence computer brought an appeal against a decision affirming the respondent Comptroller’s refusal of his patent applications for ideas developed by the system. The appellant had filed two patent applications as the inventor of an artificial intelligence machine (DABUS). Dr Thaler’s artificial neural system, DABUS, stands for “Device for the Autonomous Bootstrapping of Unified Sentience.” The first invention, dubbed “Food Container,” dealt with the shape of food packaging components. The second was a type of flashing light called “Devices and Methods for Attracting Enhanced Attention.”

Prima facie, each claimed to have a potentially patentable invention, as described by Section 1 of the Patents Act. The appellant not only owned the machine, but he had also built it and set it up to make the in question inventions. He typed “by ownership of the creativity machine ‘DABUS’” in the box requesting him to explain how he had the right to be given a patent. The Intellectual Property Office said the statement of inventorship form didn’t meet the requirements of Patents Act Pt I s.13(2), which required him to name a person as the inventor (section 13 (2) (a)) and explain how he got his right to be given the patent (section 13(2) (b)). As a result, it was found that the applications had been withdrawn. Because a proper derivation of right had not been established, the applicant was still ineligible to seek for a patent solely because he owned DABUS (as a machine cannot pass on ownership).

The decision was upheld by the High Court. First, the High Court looked at Section 7, which lays down the conditions under which a person has the right to apply for and get a patent and determined that the natural sense was that the inventor was a person. Second, it was determined that, while the appellant could have claimed a right to a patent as the inventor under Section 7(2)(a), he had not made such a case. Third, it was determined that an applicant’s subjective and honest opinion that they were authorised to file a patent application was inadequate to entitle them to a patent award, since this would render the conditions of s.7 meaningless. The Appeal was then brough to the present court.

C. Decision of the Court of Appeal

The appeal was dismissed by a majority of the court, with Birss LJ dissenting. The crucial question was whether just one individual may be a “inventor” under Section 7 of the Act. The Court looked at the decision of Yeda Research and Development Company Ltd v. Rhone-Poulenc Rorer International Holdings [2007] UKHL 43 which had clearly established that section 7 provided a comprehensive code for assessing who was eligible to a patent grant. It was clear that only a single person may be entitled to benefits under s.7 (2). The phrasing of Section 2(4) and Section 8 provided support for that view. In addition, Section 13(1) gave the inventor or joint inventors a “right.” Only people could have rights, thus innovators had to be people as well. An applicant was also required to name “the person or persons whom he believes to be the inventor or inventors” under Section 13(2)(a).

The second question before the court was whether the appellant was allowed to make an application under Section 7(2) of the Act (b).  Here, the appellant claimed that he was entitled to ” the whole of the property in them” at the moment of the innovations’ creation due to a legal requirement, and so was eligible to apply. An invention, on the other hand, was a piece of knowledge, and information, even if confidential, had no property. The property referred to when s.7(2)(b) spoke of ” the whole of the property in [the invention]” was the right to apply for and acquire a patent in respect of that invention. The common law doctrine of accession, as described in Blackstone’s Commentaries on the Laws of England, Ch.26, was the rule of law that the appellant relied on. In Blackstone, every instance of the doctrine’s application concerned new tangible property created by existing tangible property. The doctrine stated that the owner of pre-existing tangible property held new tangible property, but Blackstone made no mention of the rule applying to intangible property created by tangible property. As a result, there was no rule that the property covered by s.7(2)(b) in an invention made by a machine belonged to the machine’s owner. As a result of the appellant’s contention that the inventions were made by the machine, he was not authorised to file for patents.

This then raised the question that as to what was the proper answer to Dr. Thaler’s s. 13(2) inventorship declaration? Dr. Thaler argued to the Comptroller that he was entitled to a patent under s7(2)(b) because he invented, owned, and operated DABUS, and there was a rule of law that stated that the owner and operator of a machine that created inventions was entitled to apply for and be granted a patent for an invention created by that machine.

His Lordship noted in his dissenting judgement by Birss LJ that:

Dr Thaler has complied with his legal obligations under s13(2)(b) as well. He has given an indication of the derivation of his right to be granted the patent. The claim to derivation will be clear on the register. The assertion, if correct, is not incomplete. It would mean that Dr Thaler does indeed have the right to apply for and be granted the patent. When the application is published then if someone thinks he has the right to patents for these inventions he would see how it is that Dr Thaler’s claim is put. If he thought he had a better right than Dr Thaler he would be able to come to the Comptroller in proceedings under s8 (or after grant under s37) and, if he can, establish that he should be granted the patent instead.”

However, this is where the majority opinion contrasted. The majority decided that it was not the Comptroller’s job to analyse the applicant’s declarations of inventorship and entitlement filed under s.13(2) to see if they were well-founded. Under s.13(2), the Comptroller’s job was to see if the mandated statements were filed on time, and if they were, whether they looked to conform with the statutory requirements or were deficient on their face. The appellant had failed to identify “the person or persons whom he believed to be the inventor or inventors” as required by s.13(2) in this case (a). He, on the other hand, purposefully named a non-person as the inventor, which was technically impossible.

D. Comments and Conclusion

In the judgement, and as discussed by Rosalind English, the original refusal of the patent and its upholding in the higher courts appear to be based on a strange form of circular reasoning. DABUS could not be granted a patent because it was not a person; Mr Thaler, DABUS’s owner, could not be granted a patent since his machine could not transfer a patent to him because it was not a person. It appears reasonable to have a general rule concerning the ownership of a thing conveying ownership over what that item produces. However, as more machines like DABUS make goods, the current patent regime will quickly become obsolete.

To this end, Birss LJ did acknowledge this point in stating that:

One of the submissions made was that the technology in this case was unforeseeable at the time of the 1977 Act. I do not believe it matters but if it does then I was not satisfied that the parties had examined that question sufficiently to make such a statement with any confidence. More work would have been required. What has changed since the 1970s is terminology. Edward Feigenbaum’s pioneering work on thinking machines, then called “expert systems”, was published well before the 1977 Act.

Even if there was no general rule that information produced by a machine was the property of the machine’s owner, the Court recognised the claim of Thaler that the machine’s owner owned an innovation developed by the machine. To this end, Arnold LJ remarked that “This is really an argument about what the law should be, rather than about the present state of the law

Perhaps the time has come to conduct a thorough review the Patent Act not only in UK but in other countries, Malaysia included, to look into what the law should be in light of current technological advancements.

Leave a Reply

Fill in your details below or click an icon to log in: Logo

You are commenting using your account. Log Out /  Change )

Twitter picture

You are commenting using your Twitter account. Log Out /  Change )

Facebook photo

You are commenting using your Facebook account. Log Out /  Change )

Connecting to %s