The Supreme Court's Judgment in DABUS
Supreme Court (Lords Hodge, Kitchin, Hamblen, Leggatt and Richards) Thaler v Comptroller General of Patents, Designs and Trade Marks [2023] UKSC 49 (20 Dec 2023)
I mentioned the hearing of the appeal from the Court of Appeal's judgment in Thaler v Comptroller General of Patents Trade Marks And Designs [2021] RPC 19, [2022] Bus LR 375, [2021] EWCA Civ 1374 in DABUS in the Supreme Court on 12 April 2023. On 20 Dec 2023, the Supreme Court dismissed that appeal in Thaler v Comptroller-General of Patents, Designs and Trade Marks [2023] UKSC 49. The Court's judgment was delivered by Lord Kitchin.
What This Appeal Was Not About
In paras [48] and [49] of his judgment, Lord Kitchin said:
"[48] The Comptroller has emphasised, correctly in my view, that this appeal is not concerned with the broader question whether technical advances generated by machines acting autonomously and powered by AI should be patentable. Nor is it concerned with the question whether the meaning of the term "inventor" ought to be expanded, so far as necessary, to include machines powered by AI which generate new and non-obvious products and processes which may be thought to offer benefits over products and processes which are already known.
[49] These questions raise policy issues about the purpose of a patent system, the need to incentivise technical innovation and the provision of an appropriate monopoly in return for the making available to the public of new and non-obvious technical advances, and an explanation of how to put them into practice across the range of the monopoly sought. It may be thought that the rapid advances in AI technology in recent times render these questions even more important than they were when these applications were made."
The above issues will be decided by Parliament (possibly implementing an international agreement) rather than the courts
What The Appeal Was About
His lordship said in para [50] that the appeal was on the much more focused question of the correct interpretation and application of the relevant provisions of the Patents Act 1977 to the applications made by Dr Thaler. I have discussed those applications many times as I said in DABUS in the 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 Fools' Day 2020."The Facts
Lord Kitchin set out the factual background between para [5] and [13] of his judgment and the proceedings in the IPO, the Patents Court and the Court of Appeal between [14] and [21]. I summarized those facts as follows:
"'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.
"'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.
At the time of writing the only country in which Dr Thaler had been successful was South Africa (see the South African Patent Journal July 2021 Vol 54 No 07). There had been a list of patents and applications for patent those inventions on The Artificial Inventor Project website."
I also summarized the proceedings:
"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)",
There is now a very useful press summary on the Supreme Court's website.
The Issues
Lord Kitchin said at para [52] of his judgment that it is not and has never been Dr Thaler's case that he was the inventor and used DABUS as a highly sophisticated tool. He added that had he done so, the outcome of these proceedings might well have been different. In the circumstances, the outcome of the appeal depended on the following issues:
- "Issue 1: The scope and meaning of "inventor" in the 1977 Act"
- "Issue 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 "
- "Issue 3: Was the Hearing Officer entitled to hold that the applications would be taken to be withdrawn?"
"Issue 1: The scope and meaning of "inventor" in the 1977 Act"
His lordship set out s.7 of the Patents Act 1977 in full at para [24] of his judgment. He noted that s.7 (3) identifies the inventor as the actual deviser of the invention. He observed that any person may make an application for a patent under s.7 (1) but a patent may be granted only to one of the persons mentioned in s.7 (2). He reminded himself that Lord Hoffman had said that s.7 (2) and (3) provide a complete code for determining who is entitled to the grant of a patent in para [18] of his speech in Rhone-Poulenc Rorer International Holdings Inc v Yeda Research and Development Co Ltd [2007] UKHL 43, [2007] Bus LR 1796.
Lord Kitchin also considered s.13 of the Act. He noted that s.13 (1) recognizes the central position of an inventor and confers on that person the right to be recognized as the inventor in any published application for a patent and in any patent which may be granted on the application. S.13 (2) requires an applicant for a patent to identify the inventor in para (a) and unless the applicant is also the inventor he or she must indicate the derivation of his or her right to be granted the patent in para (b). Should the applicant fail to do so, the application shall be taken to be withdrawn.
His lordship noted that those requirements are not absolute, The applicant must only identify the person or persons he or she believes to have been the inventor or inventors. He or she is not obliged to identify the person who actually was the inventor. Similarly, the applicant must indicate rather than establish the derivation of his or her right to the patent. The bar was set deliberately low so that honest but genuine mistakes would not prejudice a grant but the identification of the inventor and the applicant's entitlement to a patent were important and could not be ignored. The learned Supreme Court justice added that rule 10 supplements the requirements of s,13. Particularly important was rule 10 (3) which set a time limit of 16 months for the filing of the information required by s.13 (2).
His lordship noted that those requirements are not absolute, The applicant must only identify the person or persons he or she believes to have been the inventor or inventors. He or she is not obliged to identify the person who actually was the inventor. Similarly, the applicant must indicate rather than establish the derivation of his or her right to the patent. The bar was set deliberately low so that honest but genuine mistakes would not prejudice a grant but the identification of the inventor and the applicant's entitlement to a patent were important and could not be ignored. The learned Supreme Court justice added that rule 10 supplements the requirements of s,13. Particularly important was rule 10 (3) which set a time limit of 16 months for the filing of the information required by s.13 (2).
At para [56] of his judgment, Lord Kitchin said:
"The structure and content of sections 7 and 13 of the Act, on their own and in the context of the Act as a whole, permit only one interpretation: an inventor within the meaning of the 1977 Act must be a natural person, and 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. Here I use the term 'technical advance' rather than 'invention', and the terms "create" or 'generate' rather than 'devise' or 'invent' deliberately to avoid prejudging the first issue we have to decide. But it is indisputable that DABUS is a machine, not a person (whether natural or legal), and I do not understand Dr Thaler to suggest otherwise."
"The structure and content of sections 7 and 13 of the Act, on their own and in the context of the Act as a whole, permit only one interpretation: an inventor within the meaning of the 1977 Act must be a natural person, and 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. Here I use the term 'technical advance' rather than 'invention', and the terms "create" or 'generate' rather than 'devise' or 'invent' deliberately to avoid prejudging the first issue we have to decide. But it is indisputable that DABUS is a machine, not a person (whether natural or legal), and I do not understand Dr Thaler to suggest otherwise."
Even though it was not a person and thus not an inventor and notwithstanding that he had no independent right to obtain a patent for his own technical contribution, Dr Thaler argued that he was entitled to a patent by virtue of his ownership of DABUS. In his submission,t an invention was an item of tangible property which had been created by another item, namely DABUS. Just as the owner of a cow acquires its calf, his ownership of DABUS entitled him to any invention that DABUS might create. He contended that s.7 (2) (b) of the Act confers the right to apply for a patent on the owner of the invention.
In Lord Kitchin's view, that argument was without merit because it failed to take account of the facts that DABUS was not a person and Dr Thaler did not fall within any of the categories of s.7 (2). Dr Thaler had never had any right to secure the grant to himself of patents under the 1977 Act in respect of anything described in the applications.
"Issue 3: Was the Hearing Officer entitled to hold that the Applications would be taken to be withdrawn?"
Lord Kitchin held that the hearing officer was plainly entitled to hold that the applications would be taken to be withdrawn for failure to satisfy s13 (2) of the Act. Rule 10 provided a 16-month time limit for compliance with that subsection. By failing to identify a living person as "the inventor" and to indicate his right to apply for a patent for the invention within that period Dr Thaler had failed to comply with s.13 (2). The consequence of non-compliance was that the application would be treated as withdrawn.
Comment
The law could be changed to allow the owner of an artificially intelligent machine to apply for patents for his or her machine's inventions. If the workd's governments want to follow that approach they will probably wish to agree to change the law following a diplomatic meeting. However, Lord Kitchin hinted att an alternative which was to treat the machine as a highly sophisticated tool and its owner as "the inventor". To a certain extent that is already done in the pharmaceutical industry who analuse massive datasets to find new uses for known mdicaments,
Changing the subject slightly, the statutory provisions and Lord Hoffmann's observations in Yeda will be familiar to anyone who has ever been involved in an entitlement dispute. Lord Kitchin's analysis of those provisions will prove to be useful in such litigation.
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