Insights provided by Mike Williams and Lara Sibley, authors of the AI Report: 2022
We previously reported on the UK Court of Appeal decision on Dr Thaler’s two UK patent applications* listing DABUS as the inventor, GB1816909.4 and GB1818161.0. DABUS stands for “Device for the Autonomous Bootstrapping of Unified Sentience”.
The case was heard by Lords Justices Arnold, Laing, and Birss, and in a decision dated 21 September 2021 all agreed that an AI-based machine is not a person and cannot be an inventor for the purposes of the relevant UK Patents Act (the “1977 Act”). The EPO, and it is believed the USPTO, have the same view. Despite this one of the judges, Birss LJ, still considered that Dr Thaler should be awarded a patent because the procedural requirements of the 1977 Act had been satisfied. The other two judges disagreed. The fact that this meant there was disagreement between Birss LJ and Arnold LJ, two Court of Appeal judges who are both highly regarded specialists in intellectual property law, may explain why leave to appeal to the Supreme Court was granted on 12th August 2022. Furthermore, the case undoubtedly raises an important principle of practice, namely whether a patent can be granted in respect of an invention believed to have been created by a machine. A decision from the Supreme Court is likely to be at least several months away and may not be issued until 2023.
Birss LJ reached his conclusion with an analysis that began with the UK Statute of Monopolies of 1623, which allowed the grant of patents “to the true and first inventor”. However under later law the inventor could be an importer “into the realm”. The “1949 Act” made the right to be granted a patent assignable and required every application to state that “the applicant is in possession of the invention”. The applicant had to name the person claiming to be the true and first inventor, and had to state that the applicant believed that that person was the true and first inventor. In the 1977 Act the idea that the inventor could be anyone other than the “actual deviser” of the invention was abolished.
The 1977 Act section 13(2)(a) requires that the applicant identifies “the person or persons whom he believes to be the inventor or inventors”, and if not the application is deemed withdrawn. Birss LJ said that this simply means that the applicant must identify who, in good faith, they believe is the inventor (or say that they are unable to identify the inventor).
Section 13(2)(b) states that the applicant, if not the inventor, must provide a statement “indicating the derivation of his or their right to be granted the patent”. There is no examination of the claimed right. For each application Dr Thaler stated that the inventor is an artificial intelligence (AI) machine called “DABUS” and that the applicant acquired the right to grant of the patents in question by “ownership of the creativity machine DABUS”.
Birss LJ considered that Dr Thaler had satisfied s13(2)(a) and that the fact that no inventor, properly so called, can be identified simply means that there is no name which the Comptroller has to mention on the patent as the inventor. He also hinted that Dr Thaler might be the real inventor. He considered that s13(2)(b) had been complied with as Dr Thaler had given an “indication” of the derivation of his right to be granted the patent, which will be clear on the register. If someone else thinks he has a better right he can come forward, although there is probably no such person and entitlement can only be challenged by a person claiming the right to the patent.
Lords Justices Arnold and Laing disagreed with this, giving greater weight to the requirements s13(2) imposes on applicants and noting that a failure to comply leads to failure of the application. It is not for the patent office to investigate the correctness of the statement to satisfy s13(2), and the correctness of the factual assertion was not disputed. However there is a difference between a bona fide mistake, which s13(2) is meant to allow, or failure to identify an inventor, and a positive assertion that the inventor is not a person. The requirement is for the applicant to identify a person believed to be the inventor, not to state their genuine belief about who the inventor is.
Dr Thaler had claimed to be entitled to apply for the patents because he was “entitled to the whole of the property” in the inventions (1977 Patents Act s7(2)(b)). It had been argued that as a general rule that the owner of a thing, such as a tree, is the owner of the fruits of that thing. Arnold LJ considered that this common law doctrine of accession refers to new tangible property that is produced by existing tangible property, but not to intangible property, referring inter alia to Roman Law. As a more recent example, A can own the copyright in a digital photograph taken with B’s camera.
It is interesting that the UK Supreme Court has allowed the further appeal. This suggests that they consider that the case has important implications, which perhaps parallels the increasing use of AI systems as tools in such fields as drug discovery. Also, whilst not a large part of the Court of Appeal decision, there is a question of whether allowing an AI system to be an inventor would have an effect on determination of inventive step. Birss LJ considers not, because the test involves the application of an objective legal standard based on the notional skilled person, who is not a real human being.
There are also some more fundamental philosophical considerations. For example Birss LJ comments that assuming the machine is the entity which actually created these inventions, it has no right to be mentioned as the inventor and no right to employee’s compensation.
In the US, the CAFC (Court of Appeals for the Federal Circuit) also came to the view that an artificial intelligence software system cannot be an "inventor" under the Patent Act; an inventor must be a human being. The CAFC also took care to point out that “we are not confronted today with the question of whether inventions made by human beings with the assistance of AI are eligible for patent protection”. The appealed decision of the District Court commented that “As technology evolves there may come a time when artificial intelligence reaches a level of sophistication such that it might satisfy accepted meanings of inventorship. But that time has not yet arrived”
* https://www.marks-clerk.com/insights/articles/part-1-uk-court-of-appeal-rules-that-an-ai-cannot-be-the-inventor-on-a-patent-application/ and https://www.marks-clerk.com/insights/articles/part-2-ain-t-an-inventor-uk-court-of-appeal-refuses-thaler-appeal-for-dabus-patent/