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On 21 September 2021 the Court of Appeal handed down its decision in THALER v COMPTROLLER GENERAL concerning allowability of UK patents having an AI based machine known as DABUS (short for Device for the Autonomous Bootstrapping of Unified Sentience) listed as an inventor. A copy of the decision can be found here.
The Court of Appeal rejected Dr Thaler’s appeal and upheld decisions of the UKIPO hearing officer and the High Court that applications were deemed withdrawn where no human inventor is named (only an AI system was named as the inventor). Dr Thaler’s appeal was rejected by a majority 2-to-1 decision.
The Lord Justices of Appeal agreed that the language of Section 7 and other provisions of the UK Patents Act 1977 could not be interpreted as allowing anything other than a person to be considered an inventor. The Lord Justices of Appeal, however, disagreed on whether Section 13(2) of the UK Patents Act required the comptroller to examine an applicant’s claimed derivation of title from the inventor.
Arnold and Laing LJJ concluded that the comptroller was required to examine whether statements concerning the inventor and derivation of title fell within the statutory grounds set out in the Patents Act, whereas Birss LJ disagreed and considered it is not part of the comptroller’s functions to determine whether an applicant’s claim to the right to be granted a patent is good – the Patents Act provides mechanisms for an entitlement challenge.
The consequence is that UK law currently still requires a human to be named as an inventor and UK patents will not be granted for applications that fail to comply with this requirement.
However, this may not be that last we hear on the issue. Dr Thaler may choose to seek permission to appeal to the Supreme Court and the UKIPO has shown its willingness to consult around the UK’s IP framework and AI, so there is always the potential for future legislative change.
If you would like to discuss this article, please contact the writer, or a member of our highly regarded patents team.
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