Authored By: Malachi Rees-Morny
University of Exeter
Basic Information and Case Citation:
Full Case Name: Thaler (Appellant) v Comptroller-General of Patents, Designs and Trade Marks (Respondent)
Citation: [2023] UKSC 49
Court: Supreme Court of the United Kingdom (on appeal from [2021] EWCA Civ 1374)
Date of Decision: 20 December 2023
Bench Composition: Lord Hodge (Deputy President), Lord Kitchin (delivering the leading judgment), Lord Hamblen, Lord Leggatt, Lord Richards
Decision: Appeal dismissed unanimously
Introduction:
Thaler v Comptroller-General of Patents[1] is a landmark decision, made by the UK Supreme Court, which addresses one of the most significant questions at the forefront of IP and AI law: Can an AI system be recognised as an inventor under the Patents Act 1977?[2] An AI researcher,
Dr Stephen Thaler, filed two patent applications attributing full inventorship to the AI DABUS, a machine he invented to generate inventive concepts. The case travelled through the Hearing Officer, the High Court, the Court of Appeal and ultimately the Supreme Court, which ruled against Dr Thaler. The decision is significant through its refusal to resolve the policy debate surrounding AI-generated innovation, holding that such a quandary is strictly a matter for Parliament. At a time of rapid technological advancement, the judgment draws a distinct line between the current law and what it may need to become.
Facts of the Case:
Dr Stephen Thaler is an American computer scientist and the sole creator of DABUS (Device for the Autonomous Bootstrapping of Unified Sentience), an AI system designed to generate novel inventions autonomously. On 17th October 2018, Dr Thaler filed a UK patent application (GB1816909.4) for a food container. On 7th November 2018, he filed a second application (GB1818161.0) for a novel emergency signal.[3] Crucially, Dr Thaler maintained throughout that the inventions were solely created by DABUS and that, by virtue of his ownership of DABUS, he was entitled to the grant of the patents.
The UKIPO informed Dr Thaler (in November 2018) that he required statements of inventorship, as per section 13 of the Patents Act and rule 10(3) of the Patent Rules 2007. In July 2019, Dr Thaler filed Form 7s identifying DABUS as the inventor and asserting that he derived the rights to the patents through ownership of DABUS. This was rejected by the UKIPO as non-compliant; they stated that Dr Thaler had failed to identify any person as the inventor and thus had not adequately indicated how he derived entitlement to the patents.
A hearing was held before the Deputy Director and Hearing Officer in November 2019. On 4 December 2019, the Hearing Officer held that DABUS could not be considered an inventor within the meaning of the Patents Act, that Dr Thaler had no proper entitlement from his ownership of DABUS, and accordingly withdrew the applications.[4] Dr Thaler appealed these withdrawals to the High Court, where Marcus Smith J dismissed the appeal on 21 September 2020. A further appeal to the Court of Appeal was dismissed by a majority (Arnold LJ and Elisabeth Laing LJ) on 21 September 2021, with Birss LJ dissenting on the question of the satisfaction of the section 13 procedural requirements by Dr Thaler. The Supreme Court granted permission to appeal and heard the case on 2 March 2023,[5] delivering judgment on 20 December 2023.
Issues of Law:
The Supreme Court identified three principal issues of law for determination:
- Whether the term ‘inventor’ in the Patents Act 1977 extends to an AI machine or may only be applied to natural persons?
- Whether Dr Thaler was nonetheless entitled to both apply and obtain patents for technical advances made autonomously by DABUS based on ownership of the machine?
- Whether the Hearing Officer was entitled to deem the application withdrawn pursuant to section 13(2) Patents Act 1977?
Arguments:
Arguments of the Appellant (Dr Thaler)
Dr Thaler’s counsel put forth four propositions. First, the owner of an AI machine is entitled to any inventions generated by said machine and its patents, provided he meets the substantive requirements of patentability. Second, there is no requirement under the Patents Act that the inventor need be a natural person, and thus it is sufficient that Dr Thaler honestly believed DABUS to be the inventor. Third, the Form 7 statements did satisfy section 13(2) as they reflected an honest and accurate account of Dr Thaler’s belief. Fourth, the Comptroller had no proper statutory basis for rejecting the application as presented.
In support of entitlement, Dr Thaler invoked the common law doctrine of accession, arguing that just as the owner of a cow owns its produce, he, as the owner of DABUS, owned any intellectual output it generates. He further relied upon section 7(2)(b) of the Patents Act, which permits patents to be granted to a person entitled, by operation of law or agreement, to the property in the invention. The Chartered Institute of Patent Attorneys intervened in support and broadly endorsed the reasoning of Birss LJ in the Court of Appeal.
Arguments of the Respondent (the Comptroller)
The Comptroller, through counsel, submitted that the appeal should be dismissed for two independent reasons. First, an inventor under the Patents Act must be a natural person, excluding the likes of AI and machines. Section 13(2)(a) required the applicant to identify the person they believed to be the inventor, whom Thaler was unable to identify. The statutory consequence of this failure is the mandatory withdrawal of the applications. Second, Dr Thaler did not fall within any category of persons to whom a patent may be granted under the exhaustive code in section 7(2). Mere ownership of a machine confers no entitlement under the Act.
Analysis of the Court’s Reasoning:
Issue 1:
Lord Kitchin, delivering the only judgment with which all the other Justices agreed, held that the term ‘inventor’ in the Patents Act is confined to natural persons. Section 7(3) defines the inventor as “the actual deviser of the invention”.[6] The word “deviser” carries its ordinary meaning and refers to a human being with cognitive capacity. Section 7’s structure reinforces this interpretation as it holds: “any person” may make an application (7(1)) and a patent “may be granted” to three specified categories of persons (7(2)), and finally, a rebuttable presumption in favour of the applicant being the entitled person is raised in section 7(4). Due to DABUS’s inherent lack of legal personhood, it cannot fall within any of these provisions.[7]
Lord Kitchin also garnered support from the House of Lords’ decision in Rhone-Poulenc Rorer International Holdings Inc v Yeda Research and Development Co Ltd,[8] where Lord Hoffmann confirmed that section 7(2) provides an exhaustive code for entitlement, underscored by the words “and to no other person”, and that the inventor must be the natural person who put forth the inventive concept. Sections 2(4), 8 and 37 of the Patents Act all assert that inventors are persons with legal personality. DABUS could therefore never have been an inventor under the Act.
Issue 2:
The Court rejected that Dr Thaler’s ownership of DABUS was sufficient to establish entitlement under section 7(2)(b). Lord Kitchin held that this provision requires the applicant to show entitlement to the property in an invention, through one of the legal routes presented. Since DABUS was not a person, there was no inventor through whom Dr Thaler could claim.[9]
The Court also firmly rejected the accession doctrine. Lord Kitchin observed that accession governs only the transfer of ownership over new tangible property produced by tangible property. An autonomous AI machine’s generation of an inventive concept involves intangible, intellectual output rather than a new physical object. The extension of the doctrine to fit such circumstances has no principled foundation. The Court adopted the reasoning of Elisabeth Laing LJ in the Court of Appeal: If Parliament had intended machines to become inventors, it would have explicitly said so, and if patent protection for AI-generated inventions is desired, then heavy amendments must be made to the Patents Act 1977 to accommodate.
Issue 3:
Section 13(2) imposes two requirements: First, the applicant must identify the person or persons believed to be the inventor and second, where the applicant is not the inventor, the basis of their right to the patent must be clearly established.[10] Lord Kitchin held that Dr Thaler had failed on both fronts. He was unable to identify any one person as the inventor, and Dr Thaler’s ownership of DABUS was insufficient under section 13(2)(b).[11] The latter was held as a matter of law, as ownership of an AI machine does not confer any right to obtain a patent over its creations. The Hearing Officer was entitled to reject a statement that was legally untenable at face value.
Judgment and Ratio Decidendi
Dr Thaler’s Appeal was dismissed unanimously by the Supreme Court, agreeing that the two patent applications must be treated as withdrawn. The applications were deemed defective on all three aforementioned issues.
The ratio decidendi is as follows: under the Patents Act 1977, an inventor must be a natural person; an AI machine lacks the legal capacity to be recognised as an inventor; and ownership of an AI machine does not, by operation of any existing rule of law (including the doctrine of accession) confer on the owner an entitlement to apply for or be granted patents in respect of inventions autonomously generated by that machine. Where an applicant fails to identify any person as an inventor and offers no legally tenable basis for the derivation of a right to the patent, the applications must be deemed withdrawn pursuant to section 13(2).
Critical Analysis:
Significance of this Decision:
Thaler represents the first direct confrontation of the question of AI inventorship by the UK Supreme Court, and its decision forms part of a nigh-global consensus. Similar proceedings before the European Patent Office,[12] and the United States Court of Appeals for the Federal Circuit have resulted in the same outcome.[13] The decision resolves, with a sense of finality, the legal position under the current UK statutory framework: AI systems cannot constitute inventors, reaffirming the constitutional principle that policy choices of this nature should remain primarily with Parliament.
Impact:
This judgment is practically significant. Developers and businesses that rely on AI to generate innovative products cannot, under current law, obtain patent protection for said inventions. This creates a structural incentive for misrepresentation of the inventive contribution or the protection of AI-generated innovations through the guise of trade secrecy rather than patent disclosure. Such an outcome would frustrate the transparency rationale of the entire patent system.
A further implication arises from Lord Kitchin’s observation that the outcome may have differed had Dr Thaler claimed himself as the inventor and DABUS as a sophisticated tool.[14] This creates a practical pathway for AI-assisted inventions with meaningful human contribution at the conceptual level; however, it also creates a perverse incentive to overstate one’s contribution to meet statutory requirements.
Critical Evaluation:
This judgment’s strength lies in its textual rigour and institutional discipline. The Court correctly identified that the Patents Act was enacted with the assumption of human orientation and that reading ‘person’ to encompass a machine would require vast judicial legislation.[15]
However, despite being legally sound, the Court’s reasoning does not engage with the underlying policy vacuum it leaves behind. Lord Kitchin acknowledged the “rapid advances in AI technology”[16] and the importance of the question raised, yet omits any guidance on the legislative reforms necessary to address them. Abbott argues that a purposive approach to patent law, focused on the rationale of incentivising innovation and promoting public disclosure, might foster an expansive interpretation that accommodates AI-generation.[17] The Court’s strict textualism, while doctrinally correct, may exacerbate the growing fissure between the law of patents and the realities of technological innovation.
Furthermore, the Court’s rejection of the accession doctrine, while persuasive, does not posit an adequate resolution for alternative legal mechanisms to confer entitlement. The judgment implicitly invites Parliament to legislate, but offers no substantial guidance for what said legislation should contain. In the interim, the law provides inadequate protection for an ever-expanding sector of technology.
Conclusion:
Thaler v Comptroller-General of Patents is a landmark decision that definitively settles the legal status of AI inventorship under the Patents Act 1977. By the unanimous decision of the Supreme Court, the current statutory framework does not permit an AI system to be named as an inventor, and that ownership of said system does not confer any independent entitlement to apply for or be granted patents. In reaching this conclusion, the Court correctly deferred to Parliament on questions of policy, while applying established principles of statutory interpretation.
The lasting significance of the judgment lies in the urgency it imparts to legislative reform. The fissure between patent law and emerging technologies will only widen with the rapid proliferation of AI systems. Further, questions persist unresolved, namely: what degree of human contribution is adequate to constitute inventorship in the context of an AI-assisted work, and how should the patent system incentivise the disclosure of AI-generated innovations? These are the challenges that the courts have now formally returned to Parliament, and which demand a considered legislative response.
Reference(S):
Primary Sources
Thaler v Comptroller-General of Patents, Designs and Trade Marks [2023] UKSC 49
Thaler v Comptroller-General of Patents, Designs and Trade Marks [2021] EWCA Civ 1374
Thaler v Comptroller-General of Patents, Designs and Trade Marks [2020] EWHC 2412 (Pat)
Rhone-Poulenc Rorer International Holdings Inc v Yeda Research and Development Co Ltd [2007] UKHL 43
University of Southampton’s Applications [2004] EWHC 2107 (Pat)
Nippon Piston Ring Co Ltd’s Applications [1987] RPC 120
EPO Legal Board of Appeal, J8/20 (21 December 2021)
Thaler v Vidal, 43 F.4th 1207 (Fed Cir 2022)
Patents Act 1977
Patent Rules 2007 (SI 2007/3291)
Secondary Sources
Ryan Abbott, The Reasonable Robot: Artificial Intelligence and the Law (Cambridge University Press 2020)
Andres Guadamuz, ‘The Artificial Intelligence Inventor’ (2022) 44(1) European Intellectual
Property Review 1
Haralambos Markou and Andres Guadamuz, ‘I, Robot: Can Artificial Intelligence Grant
Inventorship in Patent Law?’ (2019) 3 Journal of Intellectual Property Law & Practice 1
[1] Thaler v Comptroller-General of Patents, Designs and Trade Marks [2023] UKSC 49 (‘Thaler’).
[2] Patents Act 1977 (‘Patents Act’).
[3] Thaler [2023] UKSC 49, para 1.
[4] ibid para 2.
[5] ibid para 17.
[6] Patents Act, s 7(3).
[7] Thaler [2023] UKSC 49, para 56.
[8] Rhone-Poulenc Rorer International Holdings Inc v Yeda Research and Development Co Ltd [2007] UKHL 43, para 18.
[9] Thaler [2023] UKSC 49, para 79.
[10] Patents Act, s 13(2).
[11] Thaler [2023] UKSC 49, para 94.
[12] EPO Legal Board of Appeal, J8/20, Decision of 21 December 2021.
[13] Thaler v Vidal, 43 F.4th 1207 (Fed Cir 2022).
[14] Thaler [2023] UKSC 49, para 52.
[15] ibid para 49, citing Elisabeth Laing LJ in [2021] EWCA Civ 1374, para 103.
[16] Thaler [2023] UKSC 49, para 49
[17] Ryan Abbott, The Reasonable Robot: Artificial Intelligence and the Law (Cambridge University Press 2020) ch 4.
