Patents - The DABUS Appeal
 |
| Drachma Coin depicting the Automaton Talon Author Jastrow Copyright Released by owner Source Wikimedia Commons |
Court of Appeal (Lords Justices Arnold and Birss and Lady Justice Elisabeth Laing) Thaler v Comptroller of Patents, Trade Marks and Designs [2021] EWCA Civ 1374 (21 Sep 2021)
This was an appeal by Dr Stephen Thaler against the decision of Mr Justice Marcus Smith in Thaler v The Comptroller-General of Patents, Designs and Trade Marks [2020] EWHC 2412 (Pat) (21 Sept 2020) which I discussed in Thaler v The Comptroller - The Patents Court decides whether Machines can be Inventors on 22 Sept 2020. Readers will recall that Mr Thaler has made a "creativity machine" called DABUS. He alleged that DABUS had invented a Food Container and Devices and methods for obtaining advanced attention which he applied to patent. The Comptroller refused Dr Thaler's application and his decision was upheld by Mr Justice Marcus Smith. The appeal came on before Lords Justices Arnold and Birss and Lady Justice Laing on 27 July 2021 and they delivered judgment on 21 Sep 2021 (see Thaler v Comptroller General of Patents Trade Marks and Designs [2021] EWCA Civ 1374 (21 Sept 2021), Lord Justice Arnold and Lady Justice Elisabeth Laing dismissed the appeal. Lord Justice Birss would have allowed it.
Lord Justice Arnold summarized the issues in the appeal at para [115]:
"First, does DABUS qualify as an "inventor" within the meaning of the Patents Act 1977 given that it is accepted by Dr Thaler that DABUS is not a person (whether natural or legal)? Secondly, is Dr Thaler entitled to apply for patents in respect of the inventions given that they were made by DABUS? Thirdly, was the hearing officer correct to hold that, given the statements made by Dr Thaler regarding inventorship and his derivation of title in the Form 7s he filed in respect of the applications, the applications are deemed to have been withdrawn by virtue of section 13 (2) of the 1977 Act?"
Lord Justice Birss had a somewhat different summary at [27]:
"i) Does the 1977 Act require that an inventor be a person?ii) What is s. 13 of the 1977 Act for, and how does it work?
iii) What is the right response to the information Dr Thaler has provided under s13 (2)?"
In Lord Justice Arnold's judgment, only a person could be an inventor. S.130 (1) of the Act states that “inventor” has the meaning assigned to it by section 7." S.7 (3) defines "inventor" as "the actual deviser of the invention". S.7 (1) and (2) refers only to persons. Other provisions of the statute are to similar effect. He concluded at [123] that the hearing officer and Mr Justice Marcus Smith were correct to hold that DABUS does not qualify as an "inventor" within the meaning of the 1977 Act because it is not a person.
Lady Justice Elisabeth Laing agreed. She said at [102]:
"Rights are a consistent theme which runs through section 7. Only a person can have rights. A machine cannot. The premise of section 7 is that an inventor is and can only be a person. A patent can be granted 'primarily to the inventor', and only to someone else in the circumstances described in section 7 (2) (c) and (d). A patent is a statutory right and it can only be granted to a person. That means that the effect of section 7 (2) (a) is that the inventor must be a person. Only a person can make, before the invention is made, an enforceable agreement by which he is entitled to the whole of the property in the invention (other than equitable interests) (section 7 (2) (b)). Such an agreement can only be made with another person. Only a person can have a successor in title (section 7 (2) (c)). It follows that, absent a statutory deeming provision, it is simply not possible, as a matter of law, for Dabus to be an 'inventor' for the purposes of section 7."
"Rights are a consistent theme which runs through section 7. Only a person can have rights. A machine cannot. The premise of section 7 is that an inventor is and can only be a person. A patent can be granted 'primarily to the inventor', and only to someone else in the circumstances described in section 7 (2) (c) and (d). A patent is a statutory right and it can only be granted to a person. That means that the effect of section 7 (2) (a) is that the inventor must be a person. Only a person can make, before the invention is made, an enforceable agreement by which he is entitled to the whole of the property in the invention (other than equitable interests) (section 7 (2) (b)). Such an agreement can only be made with another person. Only a person can have a successor in title (section 7 (2) (c)). It follows that, absent a statutory deeming provision, it is simply not possible, as a matter of law, for Dabus to be an 'inventor' for the purposes of section 7."
So, too, did Lord Justice Birss at para [54].
In Yeda Research and Development Company Ltd v. Rhone-Poulenc Rorer International Holdings Inc and others [2008] 1 All ER 425, [2007] UKHL 43, [2007] Bus LR 1796, Lord Hoffmann opined that s.7 (2) and (3) are an exhaustive code for determining who is entitled to the grant of a patent. Dr Thaler argued that he was entitled to apply for patents for DABUS's inventions under the doctrine of accession which he contended was a "rule of law" within the meaning of s.7 (2) (b). Under that doctrine the owner of a plot of land is intended to any crops that may grow on it. The problem with that argument is that there is no rule of law that a new intangible produced by existing tangible property is the property of the owner of the tangible property and certainly no rule that the property contemplated by s. 7 (2) (b) in an invention created by a machine is owned by the owner of the machine.
Lady Justice Elisabeth Laing agreed at [102]:
"Nor, for the reasons given by Arnold LJ, has Dr Thaler identified any enactment of rule of law by which he is entitled to that property (even if he could, that would not help his case, because it would not overcome the hurdle that Dabus is not an inventor for the purposes of the Act)."
Lady Justice Elisabeth Laing agreed at [102]:
"Nor, for the reasons given by Arnold LJ, has Dr Thaler identified any enactment of rule of law by which he is entitled to that property (even if he could, that would not help his case, because it would not overcome the hurdle that Dabus is not an inventor for the purposes of the Act)."
Lord Justice Birss considered at para [84] that it was unnecessary for the Comptroller to enquire whether there was a rule of law that entitled Dr Thaler to apply for patents for his machine's inventions. He added at [85]:
"Looking at Dr Thaler's position as it stands, it is not obvious that there is any other person with a better right than Dr Thaler's to be granted patents for these inventions but if there is then they can come forward."
"Looking at Dr Thaler's position as it stands, it is not obvious that there is any other person with a better right than Dr Thaler's to be granted patents for these inventions but if there is then they can come forward."
Lord Justice Arnold and Lady Justice Elisabeth Laing held that he was but Lord Justice Birss did not. In his judgment, Lord Justice Birss had traced the legislative history of s.13 of the Patents Act 1977. Lord Justice Arnold said at [140]:
"I agree with [Lord Justice Birss] that section 13 changed the law in certain respects. In particular, it is clear from the history, the wording of section 13 (2), and section 72, that section 13 (2) is intended to ensure that bona fide errors in identifying the inventor(s) or the derivation of the applicant's title should not prevent the applicant from obtaining a patent or render the patent liable to revocation, as is section 7 (4). Furthermore, it is also clear that the purpose of section 13 (2) is not to enable the Comptroller to investigate, let alone ratify, the factual correctness of the answers given by the applicant in its application forms. I also agree with Birss LJ that the decision in [Nippon Piston Ring Co Ltd's Application [1987] RPC 120] provides assistance as to the proper interpretation of section 13 (2). I regret to say, however, that I disagree with the conclusion that he draws with respect to the present case."
"I agree with [Lord Justice Birss] that section 13 changed the law in certain respects. In particular, it is clear from the history, the wording of section 13 (2), and section 72, that section 13 (2) is intended to ensure that bona fide errors in identifying the inventor(s) or the derivation of the applicant's title should not prevent the applicant from obtaining a patent or render the patent liable to revocation, as is section 7 (4). Furthermore, it is also clear that the purpose of section 13 (2) is not to enable the Comptroller to investigate, let alone ratify, the factual correctness of the answers given by the applicant in its application forms. I also agree with Birss LJ that the decision in [Nippon Piston Ring Co Ltd's Application [1987] RPC 120] provides assistance as to the proper interpretation of section 13 (2). I regret to say, however, that I disagree with the conclusion that he draws with respect to the present case."
He explained at [142]:
"Nippon Piston also confirms, however, that the requirement imposed by section 13 (2) (b) cannot be ignored and that, if it is not complied with, then the application must be deemed withdrawn. In that case the forms filed by the applicant did not indicate how it derived its right to be granted the patents, and in particular did not indicate whether it relied upon section 7 (2) (b) or (c). This was held to be fatal, and the applications were deemed to have been withdrawn."
He continued:
"[143] In the present case Dr Thaler did not identify 'the person or persons whom he believes to be the inventor or inventors' as required by section 13 (2) (a). On the contrary, he deliberately identified a non-person as the inventor. The fact that he may genuinely have believed that DABUS was the inventor is neither here nor there. The answer he gave to the question was a legal impossibility. This analysis does not involve the Comptroller in determining whether or not the answer given was factually accurate. On the contrary, it takes the answer given entirely at face value.
[144] Nor did Dr Thaler identify "the derivation of his right … to be granted the patent". He simply asserted that it was sufficient that he owned DABUS. As a matter of law, that is incorrect. Again, this analysis does not involve the Comptroller in determining whether or not the answer given was factually accurate, but takes the answer given at face value."
"Nippon Piston also confirms, however, that the requirement imposed by section 13 (2) (b) cannot be ignored and that, if it is not complied with, then the application must be deemed withdrawn. In that case the forms filed by the applicant did not indicate how it derived its right to be granted the patents, and in particular did not indicate whether it relied upon section 7 (2) (b) or (c). This was held to be fatal, and the applications were deemed to have been withdrawn."
He continued:
"[143] In the present case Dr Thaler did not identify 'the person or persons whom he believes to be the inventor or inventors' as required by section 13 (2) (a). On the contrary, he deliberately identified a non-person as the inventor. The fact that he may genuinely have believed that DABUS was the inventor is neither here nor there. The answer he gave to the question was a legal impossibility. This analysis does not involve the Comptroller in determining whether or not the answer given was factually accurate. On the contrary, it takes the answer given entirely at face value.
[144] Nor did Dr Thaler identify "the derivation of his right … to be granted the patent". He simply asserted that it was sufficient that he owned DABUS. As a matter of law, that is incorrect. Again, this analysis does not involve the Comptroller in determining whether or not the answer given was factually accurate, but takes the answer given at face value."
The learned Lord Justice concluded at [148]:
"It follows that, on the face of the Form 7s he filed, Dr Thaler did not comply with either of the requirements laid down by section 13 (2), and the inevitable consequence is that the applications are deemed to be withdrawn."
The difference between Lord Justice Birss and Lord Justice Arnold is a narrow one and hangs principally on the application of s.13 (2). As usual, Lord Justice Birss's dissenting judgment was well reasoned and documented but it is not revolutionary. As he said in his first paragraph:
"At first sight, and given the way this appeal is presented by both parties, the case appears to be about artificial intelligence and whether AI-based machines can make patentable inventions. In fact this case primarily relates to the correct way to process patent applications through the Patent Office and turns on material which was either buried in the papers but ignored in the written and oral argument, or not referred to at all. It is an object lesson in the risks of advocacy being distracted by glamour."
"It follows that, on the face of the Form 7s he filed, Dr Thaler did not comply with either of the requirements laid down by section 13 (2), and the inevitable consequence is that the applications are deemed to be withdrawn."
The difference between Lord Justice Birss and Lord Justice Arnold is a narrow one and hangs principally on the application of s.13 (2). As usual, Lord Justice Birss's dissenting judgment was well reasoned and documented but it is not revolutionary. As he said in his first paragraph:
"At first sight, and given the way this appeal is presented by both parties, the case appears to be about artificial intelligence and whether AI-based machines can make patentable inventions. In fact this case primarily relates to the correct way to process patent applications through the Patent Office and turns on material which was either buried in the papers but ignored in the written and oral argument, or not referred to at all. It is an object lesson in the risks of advocacy being distracted by glamour."
Anyone wishing to discuss this case may call me on +44 (0)20 7404 5252 during normal office hours or send me a message through my contact form.
Comments