Can a machine be an inventor?

In the 2023 judgment ofThaler v Comptroller-General of Patents, Designs and Trademarks [2023] UKSC 49 the UK Supreme Court considered this question against the backdrop of a fast-growing sector of machine learning and Artificial Intelligence (AI). The Court confirmed that in the context of patents generated autonomously, an AI machine cannot be an inventor for the purpose of Patents Act 1977 (“the Act”).

Background

Dr. Thaler, the owner of DABUS, made two applications to register two patents; one relating to a food or beverage container, the other a new light beacon to attract attention for emergency services. It was stated that they had both been generated by an autonomous AI machine. The Hearing Officer for the Comptroller–General of Patents considered that these applications were taken as withdrawn, as the machine did not qualify as an inventor within meaning of s. 7 of the Act. It was Dr Thaler’s own case that the inventor was in fact a machine.

Whilst it is not uncommon for patent applications to be made by non-inventors, there needs to be a clear manner in which the person making the application is entitled to make it. For instance, through succession or through an employment contract. Dr Thaler was unable to detail such an entitlement within his application. Subsequently, the Hearing Officer for the Comptroller sought further information on who the inventor was and the source from which Dr Thaler derived the entitlement to make these applications.

Dr Thaler maintained his position that it was the machine that was the inventor and his rights derived from the fact that he owned the machine. This response did not satisfy the legal requirement pursuant to s. 7 and s.13 of the Act. As such, the applications were treated as withdrawn.

Dr Thaler filed objections to these decisions and the Hearing Officer for the Comptroller maintained its position. A machine cannot be an inventor for the purpose of the Act. As DABUS was a machine, it has no rights that could be transferred.

An appeal was made to the High Court. Marcus Smith J made a finding that the machine was not an inventor in the context of s.13 of the Act and thus dismissed the appeal. This decision was appealed to the Court of Appeal.

The Court of Appeal, by majority dismissed the appeal on a similar basis to the lower Courts and Tribunals. However, in dissenting, Birss LJ agreed that the inventor must be a person within the meaning of the Act, but found the Hearing Officer for the Comptroller’s further request had been complied with. Dr Thaler was asked to identify who the inventor was and from where he derived the right to make the application.

In simple terms, Dr Thaler set out that the inventor was DABUS and that Dr Thaler was the owner of the machine. Birss LJ found that it was not for the Hearing Officer for the Comptroller to treat the application as withdrawn on the basis that a person was not identified in the subsequent letter from Dr. Thaler. Birss LJ would have allowed the appeal.

There were three issues for the UK Supreme Court Justices to determine.

Firstly, what was the scope and meaning of the term “inventor”?

The Court interpreted ss.7 and 13 of the Act to mean that an inventor must be a natural person. This was considered the ordinary meaning of the definition in the Act. As a result, the DABUS machine was not an inventor.

Secondly, could Dr Thaler own any invention produced by the machine and hold the right to apply for a patent for these inventions?

Interpreting s.7 of the Act, the applicant is not required to be the inventor, which Dr Thaler maintained he was not throughout proceedings. Failing this, the applicant must fall into either one of two categories of an exhaustive list: an entitlement deriving from law, or an agreement with the inventor or successors in title.

It was held that Dr Thaler did not fall into either category. Dr Thaler argued he derived a right under the doctrine of accession (an owner of existing property also owns the property produced by the existing property.) The Court found that an invention is not tangible property to which title can pass to the owner of the machine that produced it.

Thirdly, was the Hearing Officer for the Comptroller right to find the applications as withdrawn? The Court found it was, for the reasons set out above.

Accordingly, the appeal was dismissed.

Comment

The Court’s statutory interpretation of the meaning of an “inventor” under the Act is unsurprising. It also follows similar reasoning from overseas, where Dr Thaler has initiated similar proceedings. In the US, much like the UK, an inventor must be a natural person. Though the US Patent Act did not provide a definition of “inventor,” the Court relied on various other sections of the Act as a whole.[1]

The Boards of Appeal of the European Patent Office equally considered that an inventor has to be a person with legal capacity.[2] The Boards of Appeal went further to find that the primary purpose of this was "to confer and to protect rights of the inventor […], to facilitate the enforcement of potential compensation claims provided under domestic law, and to identify a legal basis for entitlement to the application."[3] While machines lack legal capacity, the Board of Appeals was explicit in finding patentable inventions were not limited to “human-made” inventions. Accordingly, it is possible for humans to be assisted by AI to produce an invention which is capable of being patented.

Following this decision by the Supreme Court, while an autonomous AI machine cannot be an inventor, it leaves open the possibility of an AI machine assisting a natural person in producing an invention. This would allow a natural person to apply for a patent as an inventor. The current state of AI technology is not yet advanced enough to be sufficiently autonomous to produce its own inventions, but the Court considered at some point in the future, the legislation should be amended.

Lord Kitchin quoted Elisabeth Laing LJ in the Court of Appeal in this regard:

“Whether or not thinking machines were capable of devising inventions in 1977, it is clear to me that that Parliament did not have them in mind when enacting this scheme. If patents are to be granted in respect of inventions made by machines, the 1977 Act will have to be amended.” [para 103]

The UK Intellectual Property Office produced a consultation paper in 2022, "Artificial Intelligence and Intellectual Property: copyright and patents", in which it concluded amendments to the Act were not needed, especially with regard to the scope and requirements of inventorship.

--

[1] Thaler v. Vidal, 43 F.4th 1207, 1210 (Fed. Cir. 2022) cert. denied, 143 S.Ct. 1783 (2023)

[2] Decisions of December 21, 2021, J 0008/20 – Designation of inventor/DABUS and J 0009/20 – Designation of inventor/DABUS II,

[3] Id at 4.3.3