Thaler v Comptroller-General of Patents, Designs and Trade Marks
| Jurisdiction | England & Wales |
| Judge | Lord Kitchin,Lord Hodge,Lord Hamblen,Lord Leggatt,Lord Richards |
| Judgment Date | 20 December 2023 |
| Neutral Citation | [2023] UKSC 49 |
| Court | Supreme Court |
[2023] UKSC 49
Lord Hodge, Deputy President
Lord Kitchin
Lord Hamblen
Lord Leggatt
Lord Richards
Appellant
Robert Jehan
Professor Ryan Abbott
Jacob Turner
(Instructed by Williams Powell)
Respondent
Stuart Baran
(Instructed by Government Legal Department)
Heard on 2 March 2023
Lord Kitchin ( with whom Lord Hodge, Lord Hamblen, Lord Leggatt and Lord Richards agree):
This appeal concerns two applications made under the Patents Act 1977 (“the 1977 Act”) for the grant of patents for products and processes which are said (and are accepted for present purposes) to be new and not obvious developments of anything known before. One unusual feature of the applications is that any inventions they disclose and describe are said to have been generated by a machine acting autonomously and powered by artificial intelligence (“AI”). Another is that the appellant, Dr Stephen Thaler, maintains that he is entitled to make and pursue the applications on the basis that he is the owner of that machine.
The Hearing Officer for the Comptroller-General of Patents (“the Comptroller”) found that the applications must be taken to have been withdrawn, essentially for the following reasons: first, on Dr Thaler's own case, the machine made the inventions, but the machine did not qualify as an inventor within the meaning of the 1977 Act; secondly, Dr Thaler was not entitled to apply for patents for any inventions described in the applications given that, on his case, they were made autonomously by the machine; and thirdly, in these circumstances, the applications were defective because Dr Thaler had failed to identify any person or persons whom he believed to be the inventor or inventors, and he had failed properly to indicate how he derived the right to be granted the patents. An appeal by Dr Thaler to the High Court was unsuccessful. On further appeal by Dr Thaler to the Court of Appeal, a majority (Arnold LJ and Elisabeth Laing LJ) agreed with the Hearing Officer and the judge that the applications must be taken to have been withdrawn. Birss LJ, dissenting, would have allowed the appeal and permitted the applications to proceed.
These two applications are part of a project involving parallel applications by Dr Thaler to patent offices around the world. As the Court of Appeal explained, Dr Thaler and his collaborators seek to establish that AI systems can make inventions and that the owners of such systems can apply for and secure the grant of patents for those inventions. This is therefore one of a number of test cases, and it raises issues of some importance.
It has also been drawn to our attention that this is a project in which Dr Thaler and his collaborators have achieved only limited success although, for my part, I do not consider that to be a point which provides the Comptroller with any assistance in relation to the issues arising in this appeal, for its outcome depends on the meaning and application of the relevant sections of the 1977 Act.
On 17 October 2018, Dr Thaler filed an application for the grant of a patent for what was said to be an invention for a new kind of food or beverage container (United Kingdom patent application GB1816909.4). On 7 November 2018, Dr Thaler filed another application for the grant of a patent for what was said to be an invention for a new kind of light beacon and a new way of attracting attention in an emergency (United Kingdom patent application GB1818161.0).
Dr Thaler made both applications under the 1977 Act. Neither application designated a human inventor, and no separate document designating a human inventor was ever filed. Instead, the request for grant forms accompanying the applications stated that Dr Thaler was not an inventor of the inventions described in the applications.
It is not uncommon for a person who is not an inventor to apply for a patent for an invention, and to do so entirely properly. Such a person may take this course for one of a number of different reasons. For example, an employer may make an application for a patent for an invention on the basis that an employee made the invention in the course of his employment. Or it may be because the applicant is the successor in title to the inventor or a person who was at the time of the making of the invention entitled to the property in it.
In such a case, an indication of how the applicant has derived the right to be granted a patent will usually emerge at an early stage from the nature of the application, or from the applicant's replies to inquiries made by the United Kingdom Intellectual Property Office (the “UKIPO”).
The UKIPO responded to Dr Thaler's applications by letters dated 19 November 2018 and 27 November 2018, respectively, seeking further information, as it was required to do. In each case it notified Dr Thaler that he would need to file a statement of inventorship, that is to say, a statement identifying the person or persons whom he believed to be the inventor or inventors of each of these inventions and where, as here, Dr Thaler maintained that he was not an inventor, indicating how he derived the right to be granted the patent for which he was applying. He was told he would need to file these statements within sixteen months of the filing date in accordance with section 13 of the 1977 Act and rule 10(3) of the Patent Rules 2007 (SI 2007/3291) (the “rules”), to which I will come.
Dr Thaler filed what he considered to be statements of inventorship, one for each application, on 23 July 2019. He filed them, as required by the rules, on separate forms (Form 7s). These forms and the letters which accompanied them reported Dr Thaler's belief that each of these inventions was created by the AI of a machine called DABUS and that he had acquired the right to the grant of the patents for which he had applied because he owned that machine.
The UKIPO replied to these communications on 8 August 2019, informing Dr Thaler that he had not complied with the requirements of the 1977 Act in respect of either application because he had failed to identify a person whom he believed to be the inventor of the invention described in the application, and had failed to explain how he derived the right to apply for a patent from that person.
Dr Thaler was therefore asked by the UKIPO to file replacement forms which did comply with the requirements of the 1977 Act and made good the deficiencies it had identified. Dr Thaler was warned that if he failed to do so within the prescribed period, the applications would be taken to be withdrawn.
Dr Thaler's response to these requests was set out in a letter from his patent attorney, Mr Robert Jehan, a partner in the firm of Williams Powell, dated 28 August 2019. Mr Jehan maintained that the Form 7 had been filed correctly in respect of each application and that the requirements of the 1977 Act and the rules had been met. He argued that the mention of the inventor was a procedural requirement and it had been satisfied. Nevertheless and, as he put it, for the avoidance of doubt, he enclosed with the response an amended Form 7 with an accompanying statement making it clear that Dr Thaler identified no person whom he believed to be an inventor because the invention was “entirely and solely conceived by DABUS”. It followed, said Mr Jehan, that DABUS must be named as inventor. He concluded with a request for a hearing if the objection was maintained.
The objection was indeed maintained, and a hearing took place by telephone on 14 November 2019. It was taken by Mr Huw Jones, the Deputy Director and Hearing Officer for the Comptroller. Mr Jehan appeared on behalf of Dr Thaler with Professor Ryan Abbott from the University of Surrey.
On 4 December 2019, the Hearing Officer issued his decision on behalf of the Comptroller ( BL O/741/19). He explained that DABUS was not a person as envisaged by section 7 or section 13 of the 1977 Act and so was not an inventor (decision, paras 18–20). It followed that DABUS had no rights that could be transferred. Further and in any event, DABUS did not have any power to transfer anything that it might have owned (decision, para 21). Yet further, Dr Thaler was not entitled to the grant of a patent on the basis that he owned DABUS (decision, para 23). The Hearing Officer held that the applications would be taken to be withdrawn at the expiry of the sixteen-month period specified by rule 10(3) (decision, para 30).
Dr Thaler's 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 parameters of section 7, the Comptroller was justified in finding (indeed obliged to find) that the application was deficient. Here Dr Thaler, the applicant, was a person but, on his own case, was not the inventor of any invention described in either application. Further, his contention that he was entitled to the grant of the patents for some other reason was hopeless and bound to fail (judgment, para 49).
A further appeal by Dr Thaler to the Court of Appeal was dismissed on 21 September 2021 ( [2021] EWCA Civ 1374, [2022] Bus LR 375). That court held by a majority (Arnold LJ and Elisabeth Laing LJ) that DABUS did not qualify as an inventor within the meaning of the 1977 Act because such an inventor was required to be a person; that there was no general rule of law that any intangible property (including an invention) created by a machine was the property of the machine or the owner of the machine; and that...
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