02 November 2020 | Audrey Horton Professional Support Lawyer, Toby Bond Associate

First published in the November 2020 issue of PLC Magazine and reproduced with the kind permission of the publishers. Subscription enquiries 020 7202 1200.

Summary 

The Patents Court has dismissed a patent application by an individual which named an artificial intelligence (AI) machine as inventor because an inventor must be a natural person.

Background

Section 7 of the Patents Act 1977 (section 7) (1977 Act) provides that "any person" may make an application for a patent either alone or jointly with another. A patent for an invention may only be granted to: the inventor; any person entitled to the whole of the property in an invention; or their successors in title (section 7(2)). "Inventor" in relation to an invention means the actual deviser of the invention (section 7(3)).

In Yeda v Rhone-Poulenc, the House of Lords held that section 7 exhaustively determines who is entitled to the grant of a patent and that the actual deviser of the invention was the natural person who came up with the inventive concept (www.practicallaw.com/0-379-7623).

An applicant for a patent must file with the Intellectual Property Office (IPO) a statement identifying the person or persons whom he believes to be the inventor (section 13, 1977 Act) (section 13).

In September 2020, the IPO issued a call for views on the position of AI within UK patent law.

Facts 

T filed two patent applications in his own name. The accompanying form stated that T was not an inventor of the inventions specified in the applications. 

T filed statements of inventorship for both applications stating that the inventor was an AI machine called DABUS and that T had acquired the right to grant of the patents in question by virtue of his ownership of DABUS. 

The IPO decided that a natural person had to be identified as the inventor and that the naming of a machine as inventor did not meet the requirements of the 1977 Act. As it was not a person, it could not own intellectual property so had nothing to transfer to T, and the law did not provide for any intellectual property rights to be owned by the owner of the machine. T appealed.

Decision

The court dismissed the appeal.

The court rejected T's argument that he had complied with section 13 by identifying who he believed to be the inventor, DABUS, and how he derived his right to be granted a patent for the invention, by virtue of his ownership of DABUS. T's subjective belief alone was not sufficient to entitle him to the grant of a patent. Section 13 must be read in the context of section 7, which provides an exhaustive code for determining who is entitled to the grant of a patent. The presumption that the person who makes the application is the person entitled to be granted the patent is rebuttable. The IPO can reject applications where the applicant's belief regarding the identity of the inventor, or their entitlement to be granted a patent for the invention, are incapable of justification under the scheme set out in section 7. 

Section 7(1) clearly limited the right to apply for a patent to "persons" and it was common ground that DABUS was not a natural or legal person. The court considered whether the term "inventor" under the 1977 Act should be extended beyond natural persons to cover things capable of inventing, such as DABUS. However, it concluded that, properly understood, the term "inventor" under the 1977 Act must be limited to natural persons.

Section 7(3) specifies that the inventor is the actual deviser of the invention. Following Yeda, this was the natural person who came up with the inventive concept. The court also favoured limiting "inventor" to natural persons and not legal persons in the requirement for an invention to involve an inventive step, in the sense it was not obvious to the person skilled in the art. It would be hard to envision how an inventive step could be attributed to a legal person, such as a company, without also striking the mind of the agents through which it acts and so how a non-natural person could be the actual deviser of an invention. This distinction between natural persons who could be inventors and legal persons who could not was also consistent with the scheme for employee inventions under the 1977 Act, which considers the employee to be the inventor with the primary right to apply for the patent, subject to the property in that right automatically transferring to the employer.

The next question was whether T had acquired the right to apply for the patents. Section 7(2) refers to "any person" and there was no intrinsic reason why this should not extend to both natural and legal persons. However, although T was a person and capable of receiving a right to apply for a patent, DABUS was not a person and not capable of holding or transferring property to T. Taking into account the court's finding regarding the scope of "inventor", the problem was that there was nothing to be transferred to T and nobody capable of transferring it.

The court rejected T's argument that he had acquired the right to apply for the patents based on his ownership of DABUS. It also rejected T's reliance on the law of copyright relating to computer-generated works. No equivalent provision had been included in the 1977 Act and patents differed from copyright works in that they did not arise automatically and required an application which must be done by a person. Ownership of an AI system was therefore not sufficient to provide the owner with the right to obtain a patent for an invention devised by an AI system.

Comment

This decision clarifies the UK's position on AI inventors: AI systems cannot be named as inventor and the right to apply for an invention must originate from a human inventor. However, the court emphasised that nothing in its analysis should be taken to suggest that DABUS was not itself capable of an inventive concept, and also that whether the owner or controller of an inventive AI machine could be said to be the inventor is still an open question.

The court acknowledged that advances in AI could lead to the situation where an invention which was made by a machine with no related human input would be unpatentable under current patent law. However, any change in the law to allow AI inventions to be patented must come through legislation and would have to involve international agreement through the World Intellectual Property Organization.

Case: Thaler v Comptroller-General of Patents, Designs and Trade Marks [2020] EWHC 2412 (Pat). 

 

About the Authors

audrey horton module

Audrey Horton
Professional Support Lawyer
As the knowledge and development lawyer in our Intellectual Property Group based in London, I play a key part keeping the IP team up to date with legal developments and case law, scanning the horizon to ensure we are at the forefront of new trends.

Direct: +44 (0)20 7415 6000

[email protected]
toby bond module

Toby Bond
Associate
I'm a senior associate in Bird & Bird's Intellectual Property Group. Having studied physics at university, I'm fascinated by technology and the way in which it is reshaping our world.

Direct: +44 (0)20 7415 6000

[email protected]

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