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

1. Case Citation and Basic Information

Full Case Name: Thaler v Comptroller-General of Patents, Designs and Trade Marks

Citation: [2023] UKSC 49; [2024] 2 All ER 527; [2024] Bus LR 47; [2024] RPC 4[1]

Court: Supreme Court of the United Kingdom

Date of Judgment: 20 December 2023[2]

Bench Composition: Lord Hodge, Lord Kitchin, Lord Hamblen, Lord Leggatt and Lord Richards were the judges who made the decision[3].

2. The main question in Thaler v Comptroller-General was whether a software program can be listed as an inventor on a UK patent form. The UK Supreme Court said no. This decision was unanimous[4].

The problem started when Dr Stephen Thaler applied for two patents that were created by his AI system, DABUS. He did not put any name on the paperwork and he said that the machine came up with the ideas completely on its own. Dr Stephen Thaler thought that since he owned the computer he automatically owned whatever it produced[5]. However the Supreme Court did not agree with Dr Stephen Thaler.

According to the Patents Act 1977 an inventor has to be a person[6]. Just because you own a machine it does not mean you have rights to patent its output[7]. The judgment made it clear that if these rules are going to change Parliament has to be the one to change them[8].

3. Facts of the Case

Dr Stephen Thaler created an AI system called DABUS (“Device for the Autonomous Bootstrapping of Unified Sentience”)[9]. This software is designed to process data and generate technical solutions without any help from humans.

In September 2018 Dr Stephen Thaler applied for two UK patents. One was for a food container  (GB1814830.2)[10]. The other was for a warning light (GB1815824.2)[11]. On the form  (the Statement of Inventorship) Dr Stephen Thaler explicitly stated that he was not the inventor and instead he listed DABUS[12]. To claim ownership of the patents Dr Stephen Thaler relied on a common law rule called accession[13].

The dispute went through the courts for five years:

• UKIPO Hearing (2019): The UKIPO rejected Dr Thaler’s applications on the basis that DABUS was not a legal person[14].
• High Court & Court of Appeal (2020–2021): Dr Thaler appealed, but both the High Court and the Court of Appeal dismissed his claim[15] [^14].
• Supreme Court (2023): Finally, the Supreme Court also unanimously dismissed Dr Thaler’s appeal[16].

4. Legal Issues

The appeal raised four legal questions:

1. Does the Patents Act 1977 require an applicant to list a human being as the inventor?[17]
2. Can the UKIPO grant a patent when no human creator is listed on the paperwork?
3. Does owning an AI machine give you patent rights over its creations?
4. Was the Comptroller-General right to treat Dr Stephen Thalers applications as withdrawn?[18]

5. Arguments Presented

Dr Stephen Thaler argued that the 1977 Act should be read literally.He pointed to Section 7(3), asserting that if a software system devises a technical solution, it meets the statutory definition of an “actual deviser” regardless of whether it is human[19]. He also argued under the doctrine of accession that owning the underlying machine entitles the owner to its generated outputs.

On the hand the Comptroller-General argued that UK patent law is based on human legal personality. The Comptroller-General said that software has no standing and cannot own property and therefore cannot pass or assign rights to anyone else under Section 7(2) of the Act[20].

6. Court’s Reasoning and Analysis

The Supreme Court decided that an inventor has to be a being. The Court said that DABUS is software and it is not a person so it cannot hold property or assign rights.

The Court also rejected the accession argument. The Justices noted that accession applies to physical assets producing physical items (like crops or livestock), whereas patents are intangible statutory monopolies created by Parliament. Under Section 7(2)(b), patent entitlement requires a valid transfer of rights originating from an initial human inventor, which was absent here[21].

7. Judgment and Ratio Decidendi

The UK Supreme Court dismissed Dr Stephen Thalers appeal. The Court confirmed that Dr Stephen Thalers patent applications were lawfully treated as withdrawn by the UKIPO.

Ratio Decidendi

1. Under Sections 7 and 13 of the Patents Act 1977, an “inventor” must be a natural person. An AI system lacks legal personality and cannot be listed as an inventor.
2. Owning an AI platform gives the owner no title to patents generated by that software. The common law doctrine of accession does not apply to intangible statutory patent rights.

8. Critical Analysis

8.1 Significance of the Decision

The Supreme Court’s judgment in Thaler v Comptroller-General [2023] UKSC 49 represents a definitive judicial confirmation of the anthropocentric foundation of UK intellectual property law. By holding that an “inventor” under Sections 7 and 13 of the Patents Act 1977 must strictly be a natural person, the Court resolved a contentious statutory ambiguity regarding machine autonomy[22]. Rather than departing from prior authority, the ruling solidified a global judicial consensus, aligning domestic law with parallel decisions from the European Patent Office (EPO), the US Court of Appeals for the Federal Circuit, and Australian federal courts. Beyond resolving procedural questions regarding patent registry filings, the judgment’s primary constitutional significance lies in its strict adherence to judicial restraint: the Court explicitly established that creating a new category of non-human inventorship or expanding property doctrines to AI output is a policy mandate reserved solely for Parliament, not the judiciary[23].

8.2 Implications and Impact

The practical consequences of this ruling directly affect AI developers, research institutions, and commercial enterprises utilizing generative platforms for research and development. Because purely AI-generated outputs cannot be patented without a recognized human inventor, businesses face a heightened risk of commercial exposure. Consequently, the decision incentivizes two primary shifts in practice:

• 1. Strategic Misrepresentation: A risk that applicants may improperly attribute inventorship to human operators or prompt engineers to satisfy statutory requirements.
• 2. Reliance on Trade Secrecy: A commercial pivot away from public patent disclosures toward trade secrets, potentially undermining the underlying public policy of the patent system,to foster open innovation through public disclosure[24].

Subsequent commentary and international jurisprudence have consistently applied Thaler to affirm that ownership of an AI machine does not grant derivative rights to its intangible creations under traditional common law accession rules.

8.3 Critical Evaluation

The primary strength of the Court’s reasoning rests on its statutory discipline and textual rigour. Lord Kitchin’s analysis correctly recognized that the 1977 Act was constructed around human agency; interpreting “natural person” to include an autonomous machine like DABUS would have constituted overreaching judicial legislation. Furthermore, the Court rightly rejected Dr. Thaler’s reliance on the doctrine of accession, traditionally applied to tangible property like crops or livestock, holding that intangible property rights cannot automatically accrue from physical hardware without a statutory framework.

However, the ruling reveals a notable economic gap. By taking a strictly literal approach to the procedural mechanics of the 1977 Act, the Court bypassed the broader economic reality of modern R&D. A compelling alternative approach, foreshadowed by Lord Justice Birss’s dissent in the Court of Appeal, would have satisfied Section 13 by accepting the applicant’s honest statement of belief, thereby allowing the patent application to proceed to substantive examination on its technical merits rather than failing on procedural formalities. By leaving a legal vacuum where fully autonomous innovation remains unprotectable, the current framework risks disincentivizing capital investment in modern AI research[25].

9. Conclusion

Thaler v Comptroller-General makes it clear that inventors must be human and owning a computer gives you no right to patent its output. The Supreme Court gave a decision while respecting its constitutional bounds. As AI tools become standard across research labs the responsibility shifts to Parliament to decide whether to leave the law as it stands or rewrite the rules, for machine-driven innovation.

Bibliography

Table of Cases

• Thaler v Comptroller-General of Patents, Designs and Trade Marks [2023] UKSC 49; [2024] 2 All ER 527; [2024] Bus LR 47; [2024] RPC 4.
• Thaler v Comptroller-General of Patents, Designs and Trade Marks [2021] EWCA Civ 1374; [2022] Bus LR 167 (Court of Appeal).
• Thaler v Comptroller-General of Patents, Designs and Trade Marks [2020] EWHC 2412 (Pat); [2020] Bus LR 2146 (High Court).
• Thaler v Comptroller-General of Patents, Designs and Trade Marks (BL O/741/19, UKIPO Hearing Officer Decision, 4 December 2019).

Table of Legislation and Statutory Instruments

• Patents Act 1977 (c 37), ss 7, 13.
• The Patents Rules 2007 (SI 2007/3291), r 10(3).

Secondary Sources

• Wolters Kluwer, ‘The End of the Road for DABUS and Dr Thaler at the UK Supreme Court’ (Kluwer Patent Blog, 16 January 2024) https://legalblogs.wolterskluwer.com/patent-blog/the-end-of-the-road-for-dabus-and-dr-thaler-at-the-uk-supreme-court/ accessed 30 July 2026.
• JUD Abbott R, The Reasonable Robot: Artificial Intelligence and the Law (Cambridge University Press 2020).
• Bently L and others, Intellectual Property Law (5th edn, Oxford University Press 2018).
• UK Intellectual Property Office, Artificial Intelligence and Intellectual Property: Government Response to Consultation (2022).

[1] Thaler v Comptroller-General of Patents, Designs and Trade Marks [2023] UKSC 49, [2024] 2 All ER 527, [2024] Bus LR 47, [2024] RPC 4.

[2] Ibid, judgment delivered on 20 December 2023.

[3] Ibid, [1] (Lord Kitchin delivering the judgment of the Court comprising Lord Hodge, Lord Kitchin, Lord Hamblen, Lord Leggatt, and Lord Richards).

[4] Ibid, [46]–[50].

[5] Ibid, [14]–[16].

[6] Patents Act 1977, s 7(3); Thaler (n 1) [46].

[7] Thaler (n 1) [55]–[57].

[8] Ibid, [57].

[9] Ibid, [2].

[10] UK Patent Applications GB1814830.2 (submitted 17 October 2018)

[11] GB1815824.2 (submitted 7 November 2018).

[12] Thaler (n 1) [11]–[13].

[13] Ibid, [15], [51].

[14] Thaler v Comptroller-General of Patents, Designs and Trade Marks (BL O/741/19, UKIPO Hearing Officer Decision, 4 December 2019).

[15] Thaler v Comptroller-General of Patents, Designs and Trade Marks [2020] EWHC 2412 (Pat); affirmed [2021] EWCA Civ 1374.

[16] Thaler (n 1) [58].

[17] Patents Act 1977, s 13(2)(a); Thaler (n 1) [40].

[18] Patents Rules 2007 (SI 2007/3291), r 10(3); Thaler (n 1) [49].

[19] Thaler (n 1) [41]–[42]; Patents Act 1977, s 7(3).

[20] Patents Act 1977, s 7(2); Thaler (n 1) [48].

[21] Patents Act 1977, s 7(2)(b); Thaler (n 1) [56].

[22] Lionel Bently and others, Intellectual Property Law (5th edn, OUP 2018) 540–562.)TRADE

[23] UK Intellectual Property Office, Artificial Intelligence and Intellectual Property: Government Response to Consultation (2022).

[24] Ryan Abbott, The Reasonable Robot: Artificial Intelligence and the Law (CUP 2020) 49–78.)

[25] https://legalblogs.wolterskluwer.com/patent-blog/the-end-of-the-road-for-dabus-and-dr-thaler-at-the-uk-supreme-court/#:~:text=The%20first%20issue%20concerned%20whether%20the%20term,cannot%20be%20an%20AI%20system%20like%20DABUS.