DABUS in the Supreme Court

Lord Kitchin*










Jane Lambert

Supreme Court (Lords Hodge, Kitchin, Hamblen, Leggatt and Richards) Thaler v Comptroller General of Patents, Designs and Trade Marks 2 March 2023

"DABUS" stands for "Device for Autonomous Bootstrapping of Unified Sentience". It was created by Dr Stephen L Thaler. who has trained it to invent a food container and devices and enhanced devices and methods for attracting enhanced attention.  Dr Thaler has applied for patents for those inventions in several countries including the UK His applications have been rejected by the European, British and American and most of the world's other patent offices on the ground that an inventor must be a natural person.  The only country in which he has been successful is South Africa (see the South African Patent Journal July 2021 Vol 54 No 07). There is a list of Patents and Applications for those inventions on The Artificial Inventor Project website.

In the United Kingdom, Dr Thaler appealed unsuccessfully against the rejection of his application to the Comptroller General of Patents, Designs and Trade Marks ("the Comptroller") (see Re Stephen Thaler's Application BL O/741/19 on 4 Dec 2019).  The Comptroller's decision was upheld by Mr Justice Marcus Smith in  Thaler v The Comptroller-General of Patents, Designs and Trade Marks [2020] EWHC 2412 (Pat) (21 Sept 2020) and the Court of Appeal in ) Thaler v Comptroller of Patents, Trade Marks and Designs [2021] EWCA Civ 1374 (21 Sep 2021) though there was a powerful dissenting judgment from Lord Justice Birss who would have allowed the appeal.  Dr Thaler has now appealed to the Supreme Court and his appeal was heard on 2 March 2023.  Details of the appeal appear on the Supreme Court Website at "Thaler (Appellant) v Comptroller-General of Patents, Designs and Trademarks (Respondent)",

According to its website, the Court considered the following issues:

"a) Does section 13 (2) (a) of the Patents Act 1977 (the "1977 Act") require a person to be named as the inventor in all cases, including where the applicant believes the invention was created by an AI machine in the absence of a traditional human inventor?
(b) Does the 1977 Act provide for the grant of a patent without a named human inventor?
(c) In the case of an invention made by an AI machine, is the owner, creator and user of that AI machine entitled to the grant of a patent for that invention?"

The parties' submissions have been filmed and readers can watch the morning session here and the afternoon session here.   The court's website is unable to give any indication as to when judgment is likely to be handed down beyond stating that judgments tend to follow between 3 to 9 months after the conclusion of the appeal hearing, although in some cases it may be earlier than that. 

Dr Thaler's patent applications followed a similar course in the United States. They were rejected by the US Patent and Trademark Office and the rejections were upheld at first instance and appellate levels (see Thaler v Hirschfield 558 F. Supp. 3d 238 (E.D. Va. 2021) and Thaler v. Vidal, No. 21-2347 (Fed. Cir. 5 Aug 2022)). He has now petitioned for certiorari to the United States Supreme Court.

I first discussed this matter in Artificial Intelligence and Intellectual Property on 27 Dec 2019 in NIPC News when the EPO rejected Dr Thaler's applications for European patents.  I commented on the EPO's grounds in Artificial Intelligence -The DABUS Decisions on 19 Jan 2020.  I wrote about the hearing officer's decision and the judgment of Mr Justice Marcus Smith in Thaler v The Comptroller - The Patents Court decides whether Machines can be Inventors on 22 Sept 2020.  I analysed the appeal to the Court of Appeal in Patents - The DABUS Appeal on 25 Jan 2022.  I even composed a parody entitled EPO Accepts Cat as Inventor in NIPC News on April Foold's Day 2020.   I shall consider the Supreme Court's judgment in the appeal as soon as it is handed down.

Anyone wishing to discuss this article should call me on +44 (0)20 7404 5252 during UK office hours or send me a message through my contact form.


* By Supreme Court of United Kingdom - Supreme Court of United Kingdom (see Terms and conditions)Licensed under the Open Government License v3.0, OGL 3, https://commons.wikimedia.org/w/index.php?curid=82038052

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