Thaler v Comptroller-General: Part 1 - AI systems cannot be an inventor under the Patents Act

By Toby Bond

10-2020

The specification and claims of Dr Thaler's UK patent applications read very much like any other patent applications. The first suggestion that something is unusual comes on the front page of the published applications. Dr Thaler is mentioned as the applicant but the inventor is listed as "Not Yet Decided". This is not because Dr Thaler is unsure of the identity of the inventor; he is certain that the inventions were devised by an artificially intelligent system he created known as "DABUS".

But if this is true, how does it fit with the existing patent system? Can a patent be granted for an invention with an AI inventor, and who should be entitled to the grant of such a patent?

The English courts have provided their answer to these questions in the form of a decision by Mr Justice Marcus Smith regarding Dr Thaler's appeal from the rejection of his UK applications by the UKIPO. The Court's decision to refuse the appeal (and thereby uphold the UKIPO's decision to reject the applications) was not unexpected. Extending the definition of "inventor" under the Patents Act to non-humans would have involved a significant departure from conventional views on the entities which are able to engage in the process of thought (although denying that non-humans can engage in thought is very much a modern exception to the historical norm when the full sweep of human history is taken into account). However, notwithstanding the result, the decision in Stephen L Thaler v The Comptroller-General of Patents, Designs And Trade Marks [2020] EWHC 2412 (Pat) provides a comprehensive analysis of the concept of inventorship and ownership of the right to apply for a patent in the UK, and how those concepts apply AI systems. The Thaler decision is therefore essential reading for those who use AI in the process of innovation. Part 1 of this article recaps the story so far and summarises the Court's decision. Part 2 explores two questions left unanswered by the Thaler decision and looks ahead to how the law may evolve in future.

30 Second Summary: What did the Court say?

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