Thaler v The Comptroller - The Patents Court decides whether Machines can be Inventors


Patents Court (Mr Justice Marcus Smith) Thaler v The Comptroller-General of Patents, Designs and Trade Marks [2020] EWHC 2412 (Pat) (21 Sept 2020)

DABUS was described by its owner, Dr Stephen Thaler, "as a type of 'Creativity Machine'".  I have mentioned it before in Artificial Intelligence - The DABUS Inventions 19 Feb 2020 and Artificial Intelligence and Intellectual Property  27 Dec 2019 NIPC News.  Dr Thaler claims that his machine has invented a Food Container and Devices and methods for obtaining advanced attention.  Applications for patents for those inventions have been filed in the United Kingdom, the United States and the European Patent Office.  All three applications have been rejected on the grounds that an inventor must be a human being under the laws of the United Kingdom and the United States and the European Patent Treaty,

In Britain, Dr Thaler appealed to the Comptroller and his appeal was heard by Mr Huw Jones (see Re Stephen Thaler's Application BL O/741/19) on 4 Dev 2019. Mr Jones dismissed the appeal; for the following reasons:
(1) Because DABUS was a machine and not a natural person, it could not be regarded as an inventor for the purposes of the Patents Act 1977'.
(2) As a machine, DABUS was incapable of assigning any rights that it might have had to Dr Thaler.
(3) Nothing in the law permitted the owner of a machine to acquire any invention that might have been created by it.
(4) As Dr Thaler could not name a human inventor the applications would be deemed to have been withdrawn.
Dissatisfied with Mr Jones's decision, Dr Thaler appealed to the Patents Court.

His appeal came on before Mr Justice Marcus Smith who heard argument on 15 July 2020. He delivered judgment on 21 Sept 2020. By his decision Thaler v The Comptroller-General of Patents, Designs and Trade Marks [2020] EWHC 2412 (Pat) (21 Sept 2020), the learned judge upheld the decision of the hearing officer.

Dr Thaler's grounds of appeal were as follows:

"(1) Dr Thaler contended that Mr Jones had prejudged the outcome of the Decision and that, in effect, Dr Thaler did not receive an impartial hearing. I consider this ground of appeal in Section B below.
(2) Dr Thaler contended that Mr Jones had misdirected himself in his approach to construing the relevant legislation. This ground of appeal is considered in Section C below.
(3) Dr Thaler articulated various grounds of appeal relating to section 13 of the Patents Act 1977, in effect contending that this section had been used as an illegitimate means of denying Dr Thaler a right, under the 1977 Act, that he would otherwise have. These grounds are closely related, and for that reason are considered together in Section D below."

The basis of the complaint of prejudice had been paragraph 3.05 of the Formalities Manual:

"Where the stated inventor is an 'AI Inventor', the Formalities Examiner [should] request a replacement [Patents Form 7]. An 'AI Inventor' is not acceptable as this does not identify 'a person' which is required by law. The consequence of failing to supply this is that the application is taken to be withdrawn under section 13 (2) [of the Patents Act 1977]."

The hearing officer had tried to assure Dr Thaler's patent attorney that he had not previously been aware of that passage and that it would not influence his decision which would be based on legislation and case law. The judge's response was scathing.  Dr Jahan had been right to draw the Manual to Mr Jones's attention but "as a ground of appeal against the Decision the point is unarguable and should never have been taken." His lordship continued at paragraph [16]: 

"As a ground of appeal, the point is misconceived because there is no basis for suggesting that Mr Jones was seeking to do anything other than apply the law in accordance with his duty. His view of paragraph 3.05 of the Formalities Manual was that it in no way fettered or affected the decision he had to make. Depending on Mr Jones' decision, paragraph 3.05 might state a process consistent with the law or it might state an incorrect process. To suggest that paragraph 3.05 informed the Decision is simply wrong: rather, the Decision would determine whether paragraph 3.05 could continue to stand as a correct articulation of the IPO's processes."

The judge dismissed that first ground of appeal.

As for the second ground, Dr Thaler criticized paragraphs [28] and [29] of Mr Jones's judgment in which the hearing officer had considered the policy of the Patents Act 1977 and in particular whether it caters for inventions created by artificial intelligence.   Mr Justice Marcus Smith rejected that criticism and dismissed that ground of appeal. However, he did accept that it might be appropriate to consider the practical implications of a particular statutory construction and – where appropriate – to allow a purposive approach to affect the construction of a statute,  Citing Chamberline v. Harvey, (1700) 5 Mod 182, 87 ER 598 when a court had to deal with slavery for the first time the judge said:  "It may very well be that the common law or a scheme laid down in statute does – when appropriately construed or understood – cater for future developments, including developments that were – until they surfaced in litigation – unforeseen."

Dr Thaler's third ground of appeal was that s.13 of the Patents Act 1977 had been used improperly as a sanction. The judge rejected that contention and added that it was wrong to consider s,13 without also considering s.7.  Although Dr Thaler had disclaimed reliance on s.7 (2) (a) on the grounds that he had not been the inventor and DABUS was not a person the learned judge construed the section.  He concluded at [46] that "DABUS is not, and cannot be, an inventor within the meaning of the 1977 Act, simply because DABUS is not a person."  He then turned to whether Dr Thaler could rely on s.7 (2) (b) or (c) and concluded at [49] that his contention was hopeless and must fail for the following reasons:

First, Dr Thaler had abjured the status of inventor and said that DABUS was the inventor, whilst conceding that DABUS is not a person. Even if the judge accepted that DABUS was capable of being an "inventor" Dr Thaler's application would still be hopeless because DABUS would be incapable of conveying any property to Dr Thaler as it was a thing and not a person. In short, the ability to transfer, which DABUS lacks, was fatal to Dr Thaler's contentions. The same point could be put in a different way. Because DABUS was a thing, it could not even hold property, let alone transfer it.

Secondly, as DABUS could not hold property it could not transfer it.   Dr Thaler could not identify any legal mechanism by which s.7 (2) (b) and (c) of the Act might apply.  The best that he could do was to argue that as he owned and operated DABUS he was entitled to its output.  He tried to draw an analogy with s.9 (3) of the Copyright, Designs and Patents Act 1988 which provides:

"In the case of a literary, dramatic, musical or artistic work which is computer generated, the author shall be taken to be the person by whom the arrangements necessary for the creation of the work are undertaken."

The judge pointed out that the analogy broke down because the right to apply for a patent requires human intervention whereas a copyright arises automatically.  He added that  It would have been far easier to contend that Dr Thaler was entitled to the grant of a patent pursuant to section 7 (2) (a) on the ground that he owned the machine that did the inventing as it would have been a much closer analogy to the general proposition advanced by Dr Thaler that "if you own the machine, you own the output of that machine". However, that was not Dr Thaler's case.  His lordship dismissed Dr Thaler's third ground of appeal.

In dismissing the appeal Mr Justice Marcus Smith left open the possibility that the owner of an artificially intelligent machine that "invents" something can be said, him- or herself, to be the inventor.  He said at [52 (2)] of his judgment:

"......I would wish to make clear that I in no way regard the argument that the owner/controller of an artificially intelligent machine is the "actual deviser of the invention" as an improper one. Whether the argument succeeds or not is a different question and not one for this appeal: but it would be wrong to regard this judgment as discouraging an applicant from at least advancing the contention if so advised."

In the US Patent and Trademark Office, Dr Thaler received a notice requiring him to file missing parts to an application data sheet identifying the inventor on 8 Aug 2019.  He petitioned for a supervisory review of that notice.  It was dismissed on 17 Dec 2019.  Dr Thaler appealed against the dismissal of his petition in Re Application 15/524,350 for  Devices and Methods for Attracting Enhanced Attention but his application was denied by Robert W Bahr, Deputy Commissioner for Patent Examination Policy on the ground that US law required an inventor to be a human being.  For an excellent discussion on the decision, see Toni Tease The Definition of Inventorship in the Era of Magnus the Robot Fighter  June 2020 Intellections.

Authorities across the world are considering the legal challenges presented by this new technology. The World Intellectual Property Organization ("WIPO") has recently carried out a public consultation on AI and IP policy and has just opened a virtual exhibition on AI and IP. The Intellectual Property Office has just requested views on AI and IP policy (see Tim Moss AI and IP policy: views wanted 15 Sept 2020 Intellectual Property Office Blog).

Anyone wishing to discuss this article or artificial intelligence and IP generally may call me on 020 7404 5252 during UK office hours or send me a message through my contact form.


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