Stephen L Thaler v The Comptroller-General of Patents, Designs and Trade Marks

JurisdictionEngland & Wales
JudgeMr Justice Marcus Smith
Judgment Date21 September 2020
Neutral Citation[2020] EWHC 2412 (Pat)
Date21 September 2020
Docket NumberUKIPO Decision: BL O/741/19
CourtChancery Division (Patents Court)
Between:
Stephen L Thaler
Appellant (Applicant in the proceedings below)
and
The Comptroller-General of Patents, Designs and Trade Marks
Respondent (Respondent in the proceedings below)

[2020] EWHC 2412 (Pat)

Before:

The Honourable Mr Justice Marcus Smith

UKIPO Decision: BL O/741/19

Appeal No: CH-2019-000339

IN THE HIGH COURT OF JUSTICE

BUSINESS AND PROPERTY COURTS OF ENGLAND AND WALES

PATENTS COURT (ChD)

On appeal from the decision of Huw Jones (Deputy Director, acting for the Comptroller of the United Kingdom Intellectual Property Office) dated 4 December 2019

Sitting remotely at:

The Royal Courts of Justice

Rolls Building

Fetter Lane

London EC4A 1NL

Mr Robert Jehan (of Williams Powell Patent Attorneys) and Professor Ryan Abbott (instructed by Williams Powell Patent Attorneys) for the Appellant

Dr Stuart Baran (instructed by the Treasury Solicitor) for the Respondent

Hearing date: 15 July 2020

Approved Judgment

I direct that pursuant to CPR PD 39A para 6.1 no official shorthand note shall be taken of this Judgment and that copies of this version as handed down may be treated as authentic.

Mr Justice Marcus Smith

A. INTRODUCTION

(1) The patent applications

1

. On 17 October 2018 and 7 November 2018 respectively, the Appellant filed two patent applications – GB1816909.4 and GB1818161.0 – in his own name, Stephen Thaler (the Applications). Although the Applications are separate and distinct patent applications, the process of their application has been handled concurrently and there is no purpose, in the context of this appeal, in differentiating between them. The documents in the Applications referred to in this judgment are, in all material respects, the same in each.

2

. The Request for Grant forms (Patent Form 1) accompanying the Applications stated that Dr Thaler was not an inventor of the inventions specified in the Applications. That, in itself, is not surprising. Although an inventor may, of course, make an application for a patent, patents, patent applications and the right to apply for a patent are all transferable (amongst other provisions) under section 30 of the Patents Act 1977.

3

. In this case, Dr Thaler was notified by two letters (respectively dated 19 November 2018 and 27 November 2018) from the Intellectual Property Office ( IPO) that he would need to file a statement of inventorship and of right of grant to a patent (Patent Form 7) within 16 months of the filing date. These are requirements pursuant to section 13 of the Patents Act 1977, a provision that I shall be returning to.

4

. Dr Thaler filed statements of inventorship on separate Patent Form 7s for both Applications on 23 July 2019. The Patent Form 7s and a letter that accompanied it stated that the inventor was an artificial intelligence machine called DABUS and that Dr Thaler had acquired the right to grant of the patents in question by “ownership of the creativity machine DABUS”.

(2) The basis for the Applications by Dr Thaler

5

. It is important that I set out precisely what the Form 7s said in relation to DABUS: 1

A machine called “DABUS” conceived of the present invention

The invention disclosed and claimed in this British patent application was generated by a specific machine called “DABUS”, which is a type of “Creativity Machine”. A Creativity Machine is a particular type of connectionist artificial intelligence. Such systems contain a first artificial neural network, made up of a series of smaller neural networks, that has been trained with general information from various knowledge domains. This first network generates novel ideas in response to self-perturbations of connection weights between neurons and component neural nets therein. A second “critic” artificial neural network monitors the first neural network for new ideas and identifies those ideas that are sufficiently novel compared to the machine's pre-existing knowledge base. The critic net also generates an effective response that in turn injects/retracts perturbations to selectively form and ripen ideas having the most novelty, utility, or value.

In the case of the present invention, the machine only received training in general knowledge in the field and proceeded to independently conceive of the invention and to identify it as novel and salient. If the teaching had been given to a person, that person would meet inventorship criteria as inventor.

In some instances of machine invention, a natural person might qualify as an inventor by virtue of having exhibited inventive skill in developing a program to solve a particular problem, or by skillfully selecting data to provide to a machine, or by identifying the output of a machine as inventive. However, in the present case, DABUS was not created to solve any particular problem, was not trained on any special data relevant to the present invention, and the machine rather than a person identified the novelty and salience of the present invention.

A detailed description of how DABUS and a Creativity Machine functions is available in, among others, the following US patent publications: 5,659,666; 7,454,388 B2; and 2015/0379394 A1.

Inventorship should not be restricted to natural persons. A machine which would meet inventorship criteria if a natural person should also qualify as an inventor .

Neither the Patents Act 1977 nor the European Patent Convention explicitly prohibits protection for autonomous machine inventions.

Inventorship is directed to natural persons under British and EPO practice, intended to prevent company inventorship. It was not the result of seriously considering autonomous machine invention and should not therefore prohibit subsistence of intellectual property rights where there is no natural person who qualifies as an inventor.

The output of autonomously inventive machines should be patentable if it meets the requirements of patentability set out in law. The primary purpose of patent law is to incentivize innovation, together with incentivizing the disclosure of information, and the commercialization and development of inventions. Allowing patents for machine outputs incentivizes the development of inventive machines, which ultimately promotes innovation. To the extent that patents are incentivizing commercialization and disclosure of information, there is no change in this function as between a human and a machine generated invention. Failure to permit patent protection for the output of autonomously inventive machines threatens to undermine the patent system by failing to encourage the production of socially valuable inventions. This will be particularly important as artificial intelligence becomes more sophisticated and likely a standard part of industrial research and development. Clarifying now that patents are available for the output of autonomously inventive machines would provide certainty to industry and innovators.

Patent law also protects the moral rights of human inventors and acknowledging machines as inventors would facilitate this function. At present, individuals are claiming inventorship of autonomous machine inventions under circumstances in which those persons have not functioned as inventors. This is fundamentally wrong and it weakens moral justifications for patents by allowing individuals to take credit for the work of machines. It is not unfair to machines who have no interest in being acknowledged, but it is unfair to other human inventors because it devalues their accomplishments by altering and diminishing the meaning of inventorship. This could equate the hard work of creative geniuses with those simply asking a machine to solve a problem or submitting a machine's output. By contrast, acknowledging machines as inventors would also acknowledge the work of a machine's creators.

An “autonomous machine invention” should be assigned to the owner of the machine .

Machines should not own patents. They do not have legal personality or independent rights, and cannot own property.

The machine's owner should be the default owner of any intellectual property it produces and any benefits that would otherwise subsist in a natural person owner. This is most consistent with current ownership norms surrounding personal property (including both machines and patents).

In the present application, we submit that DABUS should be acknowledged as the inventor of any resultant patents, with Stephen Thaler, the machine's owner, as the assignee of any such patents.

If a machine cannot be an inventor, the first person to recognize the inventive nature of autonomous machine input may qualify as an inventor .

It has been argued that a natural person may claim inventorship of an autonomous machine invention even where that person was not involved in the development or operation of a machine by virtue of recognizing the relevance of a machine's output. This approach is questionable in cases where the natural person has not made an inventive contribution to the disclosed invention in the accepted meaning of the term.

In some cases, recognition of the inventive nature of a computer's output may require significant skill, but in others, the nature of inventive output may be obvious. In the present case, DABUS identified the novelty of its own idea before a natural person did.”

6

. Clearly, this is a far from usual Patent Form 7. It is important that some preliminary points be made:

(1) First, the Patent Form 7 contains a number of factual assertions regarding DABUS, its capabilities and its role in the inventions specified in the Applications. None of these factual assertions has been tested in these proceedings. I proceed on the assumption – as has everyone in these proceedings – that these factual assertions are true. However, I should stress that I am making an assumption in Dr Thaler's favour, not a finding.

(2) Secondly – and this is in no sense a criticism – the Patent Form 7 contains far more argument...

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3 cases
  • Stephen Thaler v Comptroller General of Patents Trade Marks and Designs
    • United Kingdom
    • Court of Appeal (Civil Division)
    • September 21, 2021
    ...OF JUSTICE BUSINESS AND PROPERTY COURTS OF ENGLAND AND WALES INTELLECTUAL PROPERTY LIST PATENTS COURT The Hon Mr Justice Marcus Smith [2020] EWHC 2412 (Pat) In the matter of the PATENTS ACT 1977 And in the matter of patent applications GB 1816909.4 and GB 1818161.0 in the name of Dr Stephen......
  • Thaler v Comptroller-General of Patents, Designs and Trade Marks
    • United Kingdom
    • Supreme Court
    • December 20, 2023
    ...appeal to a judge of the High Court against the Comptroller's decision was dismissed by Marcus Smith J on 21 September 2020: [2020] EWHC 2412 (Pat), [2020] Bus LR 2146. The judge found that section 13 of the 1977 Act had to be read in context and unless an applicant fell within the parame......
  • Thaler v Commissioner of Patents
    • New Zealand
    • High Court
    • March 17, 2023
    ...the Comptroller that the inventor is a person.15 10 11 12 13 14 15 Thaler v Comptroller General of Patents Trade Marks and Designs [2020] EWHC 2412 (Pat) at Thaler v Comptroller General of Patents Trade Marks And Designs [2021] EWCA Civ 1374. At [49]–[54] per Birss LJ, [102] per Laing LJ, a......
7 firm's commentaries
  • Part 2: AIn't An Inventor: UK Court Of Appeal Refuses Thaler Appeal For DABUS Patent
    • United Kingdom
    • Mondaq UK
    • September 28, 2021
    ...right to the Patent, as required by section 13(2)(b). This decision was appealed to the High Court and dismissed by Marcus Smith J ([2020] EWHC 2412 (Pat)) on the grounds that: (i) DABUS could not be an inventor because it was not a person; (ii) Dr Thaler had not established a right to be g......
  • Part 2: AIn't An Inventor: UK Court Of Appeal Refuses Thaler Appeal For DABUS Patent
    • United Kingdom
    • Mondaq UK
    • September 28, 2021
    ...right to the Patent, as required by section 13(2)(b). This decision was appealed to the High Court and dismissed by Marcus Smith J ([2020] EWHC 2412 (Pat)) on the grounds that: (i) DABUS could not be an inventor because it was not a person; (ii) Dr Thaler had not established a right to be g......
  • AI & IP Consultation - Focus On Patents
    • United Kingdom
    • Mondaq UK
    • March 15, 2022
    ...It is currently accepted within UK law that this must be a person (Thaler v Comptroller General of Patents, Trademarks & Designs, 2020, EWHC 2412(Pat)), and this view has also recently been confirmed by the EPO (J8/20 & As AIs become increasingly autonomous and complex, the patents section ......
  • AI & IP Consultation - Focus On Patents
    • United Kingdom
    • Mondaq UK
    • March 15, 2022
    ...It is currently accepted within UK law that this must be a person (Thaler v Comptroller General of Patents, Trademarks & Designs, 2020, EWHC 2412(Pat)), and this view has also recently been confirmed by the EPO (J8/20 & As AIs become increasingly autonomous and complex, the patents section ......
  • Request a trial to view additional results
2 books & journal articles
  • ARTIFICIAL INTELLIGENCE AND INNOVATION: THE END OF PATENT LAW AS WE KNOW IT.
    • United States
    • Yale Journal of Law & Technology No. 23, September 2020
    • September 22, 2020
    ...1; University of Southampton's Applications [2005] R.P.C. 11, 39; Thaler v. Comptroller-General of Patents, Designs and Trade Marks [2020] EWHC 2412 (Pat.) ^ 39-46; Davies, supra note 43, at 601, (52) For the United States, see, for example, Clifford, supra note 44, at 1696-97; Vertinsky &a......
  • I'm Not "human" After All: Artificial Intelligence and the Inventorship Requirement
    • United States
    • California Lawyers Association New Matter: Intellectual Property Law (CLA) No. 46-3, September 2021
    • Invalid date
    ...(last visited Jul. 2, 2021).27. Thaler v. The Comptroller-General of Patents, Designs And Trade Marks [2020] EWHC 2412 (Pat.).28. Id. at p. 19.29. Id. at p.22.30. Id. at p. 18.31. Id. at p. 21.32. Id. at p. 10.33. Rule 19 EPC: designation of the inventor: (1) The request for grant of a Euro......

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