Stephen Thaler v Comptroller General of Patents Trade Marks and Designs
| Jurisdiction | England & Wales |
| Judge | Lord Justice Birss,Lady Justice Elisabeth Laing,Lord Justice Arnold |
| Judgment Date | 21 September 2021 |
| Neutral Citation | [2021] EWCA Civ 1374 |
| Court | Court of Appeal (Civil Division) |
| Docket Number | Case No: A3/2020/1851 |
[2021] EWCA Civ 1374
Lord Justice Arnold
Lady Justice Elisabeth Laing
and
Lord Justice Birss
Case No: A3/2020/1851
IN THE COURT OF APPEAL (CIVIL DIVISION)
ON APPEAL FROM THE HIGH COURT OF JUSTICE
BUSINESS AND PROPERTY COURTS OF ENGLAND AND WALES
INTELLECTUAL PROPERTY LIST
PATENTS COURT
The Hon Mr Justice Marcus Smith
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
Royal Courts of Justice
Strand, London, WC2A 2LL
Robert Jehan and Ryan Abbott (instructed by Williams Powell) for the Appellant
Stuart Baran (instructed by Treasury Solicitor) for the Respondent
Hearing date: 27 th July 2021
Approved Judgment
Introduction
At first sight, and given the way this appeal is presented by both parties, the case appears to be about artificial intelligence and whether AI-based machines can make patentable inventions. In fact this case primarily relates to the correct way to process patent applications through the Patent Office and turns on material which was either buried in the papers but ignored in the written and oral argument, or not referred to at all. It is an object lesson in the risks of advocacy being distracted by glamour.
The appeal arises from a decision made in the UK Intellectual Property Office (UKIPO) of Mr Huw Jones, Deputy Director acting for the Comptroller ( BL O/741/19). The result of the decision was the failure of two patent applications designating an artificial intelligence machine as the inventor. What happened was that, contrary to the wishes of the applicant, Dr Stephen Thaler, who wanted them to proceed, the UKIPO held that those application were deemed to be withdrawn. The reason for this was because the statement of inventorship form was held not to satisfy s13(2) of the Patents Act 1977, even though there is no suggestion that Dr Thaler has done anything other than complete it fully and honestly. Nevertheless as a result the applications have failed.
The two patent applications – GB18116909.4 and GB1818161.0 – were filed on 17 th October 2018 and 7 th November 2018 respectively by Dr Thaler. The first is entitled “Food Container” and concerns the shape of parts of packaging for food. The second is entitled “Devices and Methods for Attracting Enhanced Attention”, and is a form of flashing light. On the face of it each discloses a potentially patentable invention, that is to say patentable as defined by s1 of the 1977 Act. None of those questions are in issue.
Patent Form 1, the Request for Grant form, stated that Dr Thaler was not the inventor of the inventions. This is not uncommon and arises, for example, where a company applies for a patent for an invention made by an employee. The IPO informed Dr Thaler that he would need to file a statement of inventorship within 16 months of the filing date of the applications in accordance with s. 13(2) of the 1977 Act.
The filing of the statement of inventorship took place on 24 th July 2019. Since then the applications have proceeded together.
The original form, in the section for the Family Name of the Inventor, gave the name “ DABUS”, which is the name of Dr Thaler's AI machine. In response to the box requiring Dr Thaler to indicate how he had the right to be granted a patent, Dr Thaler wrote “ by ownership of the creativity machine ‘DABUS’”. Dr Thaler filed an explanation stating that the invention was generated by DABUS and briefly explained why Dr Thaler said he should be granted a patent.
On 8 th August 2019, the IPO responded stating Dr Thaler had failed to comply with s. 13(2) of the 1977 Act which required him to identify a person as the inventor and to indicate how he had derived his rights from that person.
Dr Thaler filed an Amended Form 7 on 28 th August 2019 declaring that “ the applicant identified no person or persons whom he believes to be an inventor as the invention was entirely and solely conceived by DABUS”. Dr Thaler requested a hearing on the matter. It is also now clear and undisputed from the material now available that not only was Dr Thaler the owner of DABUS but he was also its creator and was the person who set it up to run to produce the inventions in issue.
The relevant legislation is s7 and s13 of the Patents Act 1977. Section 7 of the 1977 states:
Right to apply for and obtain a patent.
(1) Any person may make an application for a patent either alone or jointly with another.
(2) A patent for an invention may be granted—
(a) primarily to the inventor or joint inventors;
(b) in preference to the foregoing, to any person or persons who, by virtue of any enactment or rule of law, or any foreign law or treaty or international convention, or by virtue of an enforceable term of any agreement entered into with the inventor before the making of the invention, was or were at the time of the making of the invention entitled to the whole of the property in it (other than equitable interests) in the United Kingdom;
(c) in any event, to the successor or successors in title of any person or persons mentioned in paragraph (a) or (b) above or any person so mentioned and the successor or successors in title of another person so mentioned;
and to no other person.
(3) In this Act “inventor” in relation to an invention means the actual deviser of the invention and “joint inventor” shall be construed accordingly.
(4) Except so far as the contrary is established, a person who makes an application for a patent shall be taken to be the person who is entitled under subsection (2) above to be granted a patent and two or more persons who make such an application jointly shall be taken to be the persons so entitled.
The scheme of the section is that any person may make an application (s7(1)) and then s7(2) defines the persons to whom a patent may be granted, also stating that it may be granted to no other persons. S7(3) provides a definition of the inventor as the actual deviser of the invention and s7(4) provides for a rebuttable presumption that the person making a patent application is entitled to be granted the patent.
There are three sub-classes in s7(2) – (a) the inventor, (b) any person who is the first owner of the “property in” the invention at the time of the making of the invention, and (c) successors in title to (a) or (b). The exact nature of what the Act means by the property in the invention is unclear although it may not matter in practice. In Yeda Research and Development Company Ltd v. Rhone-Poulenc Rorer International Holdings [2007] UKHL 43 at [53] Lord Walker described the property right which comes into existence the moment the invention is made and before an application is made as a sort of inchoate property right. Whatever its nature, the right must include the right to apply for and to be granted a patent for the invention.
The other relevant part of the legislation is section 13 of the Act. It provides:
Mention of inventor.
(1) The inventor or joint inventors of an invention shall have a right to be mentioned as such in any patent granted for the invention and shall also have a right to be so mentioned if possible in any published application for a patent for the invention and, if not so mentioned, a right to be so mentioned in accordance with rules in a prescribed document.
(2) Unless he has already given the Patent Office the information hereinafter mentioned, an applicant for a patent shall within the prescribed period file with the Patent Office a statement—
(a) identifying the person or persons whom he believes to be the inventor or inventors; and
(b) where the applicant is not the sole inventor or the applicants are not the joint inventors, indicating the derivation of his or their right to be granted the patent;
and, if he fails to do so, the application shall be taken to be withdrawn.
(3) Where a person has been mentioned as sole or joint inventor in pursuance of this section, any other person who alleges that the former ought not to have been so mentioned may at any time apply to the comptroller for a certificate to that effect, and the comptroller may issue such a certificate; and if he does so, he shall accordingly rectify any undistributed copies of the patent and of any documents prescribed for the purposes of subsection (1) above.
The section provides that inventors have the right to be mentioned in the patent (s13(1)). During the application process the applicant must provide a statement containing certain information and if that is not provided within the appropriate time the application is deemed withdrawn (s13(2)). Two kinds of information are required – about inventorship (13(2)(a)) and the derivation of the applicant's right to grant (s13(2)(b)). Patent Form 7 “ Statement of inventorship and of right of grant of a patent” is the relevant form. Finally under s13(3) disputes about inventorship can be resolved.
The hearing before Mr Jones was on 14 th November 2019. The decision was against Dr Thaler, concluding at paragraph 30 as follows:
“30. I have found that DABUS is not a person as envisaged by sections 7 and 13 of the Act and so cannot be considered an inventor. However, even if I am wrong on this point, the applicant is still not entitled to apply for a patent simply by virtue of ownership of DABUS, because a satisfactory derivation of right has not been provided. The applications shall be taken to be withdrawn at the expiry of the...
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