Thaler (Appellant) v. Comptroller-General of Patents, Designs, and Trade Marks (Respondent) [2023] UKSC 49

On Appeal From: [2021] EWCA Civ 1374

Parties Involved

Appellant: Dr. Stephen Thaler
Respondent: Comptroller-General of Patents, Designs, and Trade Marks

Representation

Justices: Lord Hodge, Lord Kitchin, Lord Hamblen, Lord Leggatt, Lord Richards

Hearing Details

The appeal concerns the interpretation of the Patents Act 1977 in the context of artificial intelligence (AI) as an inventor.

Key Facts

1. Patent Applications:
   • In 2018, Dr. Thaler filed two patent applications (GB18116909.4 and GB1818161.0) under the Patents Act 1977.
   • He stated that the inventions were made by DABUS, an AI system, and not by a human.
2. Ownership Claim: Dr. Thaler claimed entitlement to the patents based on his ownership of DABUS.
3. Comptroller’s Decision: The Comptroller rejected the applications, stating:
   • DABUS cannot be an inventor under the 1977 Act.
   • Ownership of DABUS does not confer entitlement to patent rights.
4. Appeal History:
   • High Court and Court of Appeal dismissed Dr. Thaler’s appeals, affirming the Comptroller’s decision.

Main Legal Issues

Issue 1: Can an AI system, such as DABUS, be recognized as an inventor under the Patents Act 1977?

Issue 2: Can Dr. Thaler claim entitlement to the patents based on his ownership of DABUS?

Issue 3: Was the Hearing Officer correct in deeming the applications withdrawn?

Judgment

The Supreme Court unanimously dismissed the appeal, affirming that DABUS cannot be recognized as an inventor under the Patents Act 1977 and that Dr. Thaler has no entitlement to the patents.

Observations and Legal Principles

Issue 1: Scope of the Term “Inventor”

1. Statutory Interpretation:
   • Sections 7 and 13 of the Patents Act 1977 require an inventor to be a natural person.
   • Case law, including Rhone-Poulenc Rorer International Holdings Inc v. Yeda Research and Development Co Ltd [2007], confirms that inventors are individuals who conceptualize the invention.
   • Section 13 makes no provision for machines to be identified as inventors.
2. Supreme Court Finding:
   • An inventor must be a human being.
   • DABUS, as an AI system, cannot qualify as an inventor.

Issue 2: Ownership of DABUS and Patent Entitlement

1. Dr. Thaler’s Arguments:
   • Ownership of DABUS confers entitlement to patents based on the doctrine of accession.
   • An invention should be considered property that transfers with ownership of the creating machine.
2. Court’s Analysis:
   • Section 7 provides a complete code for determining patent entitlement, requiring either inventorship or a direct claim through the inventor.
   • The doctrine of accession does not apply, as inventions are intangible intellectual property, not physical property linked to the machine.
3. Supreme Court Conclusion:
   • Dr. Thaler’s ownership of DABUS does not grant him rights to apply for or obtain patents.

Issue 3: Withdrawal of the Applications

1. Statutory Requirements:
   • Section 13(2) requires the applicant to identify the inventor and provide the basis for entitlement.
   • Dr. Thaler failed to satisfy these requirements, as DABUS cannot be an inventor.
2. Deemed Withdrawal:
   • The Comptroller was correct in concluding that the applications were deemed withdrawn after the statutory period under rule 10(3) of the Patent Rules 2007.

Decision

The Supreme Court upheld the Comptroller’s decision to deem the patent applications withdrawn, affirming that DABUS cannot be recognized as an inventor under existing patent law. Dr. Thaler’s appeals were dismissed at all levels.

PDF

Judgment (PDF)

PDF | 293.49 KB

20 December 2023

PDF

Press summary (PDF)

PDF | 206.15 KB

20 December 2023