This is an informal case summary prepared for the purposes of facilitating exchange during the 2022 WIPO IP Judges Forum.
Session 2: Patents and New Technologies
Court of Appeal of England and Wales, United Kingdom [2021]: Thaler v Comptroller General of Patents Trade Marks and Designs [2021] EWCA Civ 1374
Date of judgment: September 21, 2021
Issuing authority: Court of Appeal of England and Wales
Level of the issuing authority: Appellate instance
Subject matter: Patents (Inventions)
Plaintiff: Stephen Thaler (appellant)
Defendant: Comptroller General of Patents Trade Marks and Designs (respondent)
Keywords: Patentability, Artificial intelligence, Processing of patent applications
Basic facts: The case involved whether an artificial intelligence (AI) system can and should be designated as the inventor, pursuant to Section 13(2)(a) of the Patents Act 1977, under circumstances in which the AI system is the sole and actual deviser of the invention; and whether the AI system, and whether the patent applicant, Thaler, as the owner of the AI system, is entitled to the grant of the patents under the provisions of Section 7 of the Patents Act. The inventions in question had been deemed to meet the requirements of patentability and there had been no objection to the granting of the patents in principle.
In 2018, Stephen Thaler filed two patent applications with the UK Intellectual Property Office (UKIPO), giving “DABUS”, which is the name of Thaler’s artificial intelligence (AI) machine, in the section for the Family Name of the Inventor. UKIPO decided against Thaler’s patent application, concluding that DABUS is not a person as envisaged by Sections 7 and 13 of the Patents Act and therefore did not meet the definition of “inventor”. The failure was on two grounds: DABUS was not a person and so cannot be the inventor, and separately, Thaler was not entitled to apply for the patents.
Thaler appealed the refusal to the High Court, where his appeal was dismissed. Thaler appealed to the Court of Appeal.
Held: The Court of Appeal, by a majority ruling, held to dismiss the appeal.
Relevant holdings in relation to patent applications naming AI machines as the inventor: The Court of Appeal unanimously held that an inventor must be a person.
The entire Court also agreed that it is not the Comptroller’s function to examine statements of inventorship and entitlement. However, the majority of the Court noted that if the requirements imposed by Section 13(2) are not complied with, the application must be deemed withdrawn. In a dissenting judgement, Birss LJ concluded that Thaler complied with Section 13(2) by identifying the person he believed to be the inventor and indicating the derivation of his right to be granted the patent.
The majority of the Court also held that there was no rule of law that a new intangible produced by existing tangible property was the property of the owner of the tangible property, and therefore no rule that patent in an invention created by a machine was owned by the owner of the machine.
Relevant legislation:
Sections 7 and 13(2) of the Patents Act 1977