UK Supreme Court Dismisses DABUS as Inventor

“Today’s judgment affirmed the view that the law will have to change before any AI machine gets a patent in its name in the UK.”

DABUSUnsurprisingly, the UK Supreme Court today ruled that Stephen Thaler’s AI Machine, DABUS, cannot be granted patents for inventions it autonomously created. While the Court suggested that questions such as whether inventions like DABUS’ should be patentable and if the meaning of the term “inventor” should be expanded are important ones that should be considered at a policy level, the present case was concerned solely with the interpretation of the present law, which clearly does not contemplate non-human inventors.

Thaler filed two UK patent applications in October and November 2018 for a “Food Container” and “Devices And Methods For Attracting Enhanced Attention,” respectively. Parallel applications have been filed in many other jurisdictions, mostly unsuccessfully.

In 2021, the England and Wales Court of Appeal upheld lower rulings that the patent applications were deemed to be withdrawn. (Thaler v Comptroller General of Patents Trade Marks And Designs [2021] EWCA Civ 1374), although the three-judge panel was split. Lord Justice Birss dissented from the majority, explaining that Thaler complied with the relevant law, Section 13(2) of the Patents Act 1977, in part because he contended that “he created, owns and operated DABUS and there is a rule of law whereby the owner and operator of a machine which creates inventions is entitled to the right to apply for and be granted a patent for an invention created by that machine.”

Although the Court of Appeal ruled against them, Thaler’s representative in the case, Professor Ryan Abbott of Surrey University, said they were encouraged by the dissent and would appeal to the Supreme Court. But today’s judgment affirmed the view that the law will have to change before any AI machine gets a patent in its name in the UK.

The judgment, authored by Lord Justice Kitchin, noted that Thaler may well have been successful had he simply listed himself as the inventor and DABUS as a “highly sophisticated tool” that aided in the invention process. However, since Thaler has explicitly denied any involvement in the invention process, Kitchin said the outcome of the case turns on three questions:

1) The scope and meaning of ‘inventor’ in the 1977 Act;

2) Was Dr Thaler nevertheless the owner of any invention in any technical advance made    by DABUS and entitled to apply for and obtain a patent in respect of it?; and

3) Was the Hearing Officer entitled to hold that the applications would be taken to be withdrawn?

On the first question, the opinion found that the Act unequivocally requires that an inventor be “a natural person” and that “DABUS is not a person at all, let alone a natural person: it is a machine and on the factual assumption underpinning these proceedings, created or generated the technical advances disclosed in the applications on its own.”

On the second issue, Kitchin said Thaler’s argument fails right off the bat because, despite his ownership of DABUS and his contentions that he was therefore entitled to file applications for DABUS’s outputs, “under section 7(2)(a), there must be an inventor, and that inventor must be a person. DABUS was not and is not a person.”

And on the final question, Kitchin said the Hearing Officer for the Comptroller-General of Patents, Designs and Trademarks at the UK Intellectual Property Office was correct to have deemed the applications withdrawn as required by the Act because Thaler failed to identify a legal inventor and failed to establish that he was entitled to apply for the technical developments made by DABUS. The Court therefore ultimately dismissed the appeal.

In a statement emailed to IPWatchdog, Abbott had this to say of the decision:

“It was unfortunate to see the Supreme Court take a textualist approach to this issue, which results in a lack of protection for AI-generated inventions. This now means it is now up to Parliament to change the law to allow AI-generated inventions to be protected and to make the UK a favorable jurisdiction for the use and development of AI in research and development. Until then, future legal disputes will likely focus on how much and what kinds of contributions from a natural person are required to devise an invention with AI involvement, and this is likely to become increasingly challenging to determine as AI is increasingly adopted across industries and becomes increasingly sophisticated.”

Image Source: Deposit Photos
Author: sarah5
Image ID: 138448110 

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6 comments so far.

  • [Avatar for Anon]
    Anon
    December 24, 2023 08:31 am

    Seasons’ greetings to you and yours as well, Max Drei.

    It has been many years now that I have bothered with IPKat (after their comment control policy veered to suppression of certain viewpoints).

    I am puzzled a bit at your choice of silence, given how in the past you have been quite vocal about State of the Art and the differences in treating that State between different Sovereigns.

    While the UK decision hinges on a very precise set of constraints for what “an iventor who may obtain a patent” may be, much like the plain observable fact that a photograph (taken by a Simian) does in fact exist, the fruits of AI do exist.

    State of the Art – being judged by a non-human legal fiction — does not care how that state came into being, only that it IS in being. Do you not at least agree with this proposition?

  • [Avatar for Max Drei]
    Max Drei
    December 24, 2023 06:28 am

    Anon, the answer is Yes. Prompted by your enquiry I visited the IPKat, scrolled down to its “older posts” and added two thoughts to the patent profanity thread.

    As to your comment here, I’m lost for words, except, have a Happy Christmas, won’t you.

  • [Avatar for Anon]
    Anon
    December 23, 2023 09:06 pm

    Kat have your tongue, MaxDrei?

  • [Avatar for Anon]
    Anon
    December 21, 2023 08:01 am

    MaxDrei,

    You are trying too hard.

    This is less a legal question and more of an objective question.

    Let’s add a wrinkle:

    Has the State of the Art changed due solely to DABUS new item? And keep in mind that State of the Art is NOT determined for any real person but is instead determined for the non-human legal fiction of a Person Having Ordinary Skill In The Art.

  • [Avatar for Max Drei]
    Max Drei
    December 21, 2023 05:07 am

    Anon, as to your question “Is there an invention”, who shall we petition for an answer?

    The PTO, I would suggest.

    Who shall file such a petition? The one who claims to be the inventor (or their assignee) I would suggest.

    Was Dr Thaler the inventor? He says no. Was he the inventor’s assignee? He says no.

    But wait. Could you or I or anybody else just pay a fee and ask the USPTO for its opinion, whether the DABUS output is a patentable invention? Is that a possibility?

    But aside from all that, hasn’t Judge David Kitchen answered your question already, with a perhaps or a quite possibly or even an ever-increasingly likely yes?

  • [Avatar for Anon]
    Anon
    December 20, 2023 10:56 am

    An underlying question (akin to the fact that a Simian Selfie did in fact exist):

    Is there an invention present that was not there prior to DABUS?

    Discuss.

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