Thaler v Comptroller – General of Patents EWCA Civ 1374 

Introduction :

In recent years, the rapid advancement of artificial intelligence (AI) has raised profound questions about the capacity of current legal frameworks to accommodate non-human creators. One of the most debated cases at the intersection of law, technology, and intellectual property is  Thaler v Comptroller-General of Patents, Designs and Trade Marks [2021] EWCA Civ 1374, commonly referred to as the “DABUS case.” This case marked the first time a UK court had to directly address whether an AI system could be recognised as the legal inventor of a patentable invention.

Dr. Stephen Thaler, a US-based technologist, developed DABUS—an AI system that he claims independently created two inventions. He sought to patent these inventions in several jurisdictions, including the United Kingdom, listing DABUS as the inventor. The UK Intellectual Property Office (UKIPO) rejected the applications on the basis that only a natural person can be recognised as an inventor under UK patent law. This led to a legal challenge culminating in the Court of Appeal’s 2021 decision.

This case is legally significant for several reasons. First, it challenges the traditional understanding of inventorship, which has always been grounded in the notion of human agency and creativity. Second, it highlights a growing tension between technological capabilities and legislative frameworks that were not designed with AI in mind. Third, it has sparked a broader international debate, with varying legal outcomes in different jurisdictions where similar applications were filed.

This paper will examine the background, legal reasoning, and broader implications of the DABUS case in detail. It will explore the limitations of existing patent law in handling AI-generated inventions and consider the possible legal and policy responses. Ultimately, this analysis aims to evaluate whether the current legal approach strikes an appropriate balance between promoting innovation and upholding the core principles of intellectual property law.

Background and Legal Framework 

The legal backdrop to the Thaler v Comptroller-General  case rests primarily on the  UK Patents Act 1977 , which governs patentability, rights of inventors, and the procedures for registering patents in the United Kingdom. Central to the case is the legal definition of an “inventor” and whether this term can include non-human entities such as artificial intelligence systems.

Definition of Inventor under UK Law 

Section 7 of the  Patents Act 1977  outlines who has the right to apply for and be granted a patent. According to the statute, the right to a patent belongs to the inventor or someone who has acquired the right from the inventor. Section 13 further requires that the applicant must  identify the person believed to be the inventor. Importantly, the law presumes that the “inventor” is a  natural person , and this interpretation has been reinforced through judicial precedent.

Nowhere in the Act is there provision for  non-human entities —such as corporations, software, or AI systems—to be legally recognized as inventors. This is rooted in the traditional understanding of inventorship as a form of intellectual authorship requiring cognitive ability, creativity, and intentionality—traits legally attributed to humans.

Role of the UK Intellectual Property Office (UKIPO)

The UKIPO serves as the administrative body responsible for examining patent applications. It ensures that applications meet statutory requirements, including the proper identification of an inventor. In Thaler’s case, the UKIPO refused the application because:

• DABUS, being an AI, is not a person  and therefore cannot be an inventor under the Patents Act.
• Since no valid inventor was identified,  application was deemed non-compliant with Sections 7 and 13.

The UKIPO’s decision followed the letter of the law, emphasizing that any changes to the definition of “inventor” must come from Parliament , not administrative interpretation.

This case highlights a crucial policy tension. On one hand, the law aims to  protect intellectual labor  and reward individuals who invent. On the other, it must now grapple with  emerging realities in which AI systems can generate novel and useful inventions with little or no direct human involvement. The rigidity of current legislation creates a challenge for innovators using AI tools, as they may struggle to secure patent protection under existing rules.

The legal framework, though well-established, is facing increasing pressure to  evolve . Whether that evolution should include redefining inventorship to encompass AI remains a contentious issue—and one that courts are now being asked to confront more frequent .

Thaler v Comptroller-General of Patents, Designs and Trade Marks  (the DABUS case), the barristers representing both parties were:

For Dr. Stephen Thaler (the applicant):

• Professor Ryan Abbott  

A prominent academic and expert in the field of intellectual property law, Professor Abbott has been a leading advocate for the recognition of AI as an inventor in patent law cases, including this one.

 He has been involved in several legal challenges on behalf of Dr. Thaler to have AI recognized as an inventor in various jurisdictions.

• Benet Brandreth QC 

A barrister from  Fountain Court Chambers**, Benet Brandreth QC acted as one of the barristers representing Dr. Thaler in this case. He is known for his expertise in intellectual property law and his work in complex litigation.

For the UK Intellectual Property Office (UKIPO) (respondent): 

• James Mellor QC 

A leading barrister from 4 New Square Chambers James Mellor QC represented the UK IPO in defending the position that AI cannot be recognized as an inventor under the current legal framework. He is a well-regarded expert in intellectual property law and has represented the UK IPO in numerous high-profile cases.

• Andrew Lykiardopoulos QC 

Another barrister who represented the UKIPO in the case, Andrew Lykiardopoulos QC also has significant experience in intellectual property law and has acted in several cases involving patents and innovation.

Judicial Reasoning and Judgment  

The judicial journey in Thaler v Comptroller-General unfolded in the High Court and subsequently the Court of Appeal, where judges had to grapple with whether an artificial intelligence system can legally be recognized as an inventor under UK patent law. The case required a close reading of the Patents Act 1977 and raised fundamental questions about the nature of inventorship in a digital age.

High Court Judgment

In 2020, Justice Marcus Smith of the High Court upheld the UKIPO’s decision to reject Thaler’s applications. The court found that under Section 13(2)(a) of the Patents Act, the applicant must name a person as the inventor. Since Thaler had listed DABUS—a machine—as the inventor, the court concluded that the statutory requirement had not been met.

Justice Smith acknowledged that the law may not reflect modern technological realities but emphasized that:

“It is not the function of this Court to rewrite the law to accommodate new technologies, however desirable that may be.”

He accepted that DABUS may have generated the inventions but concluded that the legal meaning of “inventor” could not be stretched to include AI without legislative reform. Therefore, he ruled against Thaler.

Court of Appeal Judgment

Thaler appealed to the Court of Appeal, which delivered a split decision in 2021. The court agreed with the High Court that an inventor must be a natural person and that DABUS could not be recognized as such.

• Lord Justice Arnold (majority opinion) agreed with the UKIPO, stating that the legal framework requires a human inventor:
  
• “There is no suggestion anywhere in the 1977 Act that an inventor can be anything other than a natural person.”
  
• Arnold further emphasized that identifying an inventor is not optional—it is a mandatory requirement for a valid application.
  
• Lord Justice Laing concurred, reinforcing that the act of inventorship involves an element of personal creativity, which AI lacks under current law.
  
• Lord Justice Birss dissented, arguing that the focus should not be on the capabilities of the inventor but on the proper procedure. He maintained that if the applicant transparently states that the invention was made by an AI and claims ownership of the machine, that might satisfy the statutory requirements. However, he too acknowledged the difficulties in extending the law as it stands.
  

Key Judicial Findings

1. Inventor Must Be Human: The consistent thread across the majority judgments is that the term “inventor” under UK law implies a human being—a natural person capable of legal rights and responsibilities.
   
2. Ownership vs Inventorship: Thaler’s argument that owning DABUS entitled him to patent rights was also rejected. Since there was no legally recognized inventor, the issue of who owned the rights did not arise.
   
3. Judicial Restraint: All judges, even the dissenter, emphasized that their role was to interpret the law, not to update or reform it. Any changes to the definition of “inventor” must come from Parliament, not the judiciary.
   

Final Outcome

The Court of Appeal ruled 2–1 against Thaler. His applications remained invalid in the UK due to failure to meet the requirements under the Patents Act. The case was later denied permission to be appealed to the UK Supreme Court, solidifying the Court of Appeal’s judgment as final.

as diverse as medicine, technology, and design. As AI continues to evolve and increasingly contributes to innovation, the legal landscape will need to adapt. However, the court’s decision also reflects broader concerns about maintaining the integrity and purpose of intellectual property law, which has historically been designed to incentivize human creativity and invention.

Challenges and the Need for Reform

One of the primary challenges revealed by the Thaler case is the growing gap between legal frameworks and the realities of AI-driven innovation. While AI can now generate new ideas, designs, and inventions autonomously, the law continues to treat inventorship as something exclusively human. This situation highlights the incompatibility of current patent laws with emerging technological realities.

To address these issues, reform of intellectual property law will likely be necessary. Countries may need to redefine the concept of “inventor” in a way that reflects the increasing autonomy of AI systems. This could include:

• Recognizing AI as a legal agent in patent applications
  
• Defining clearer pathways for ownership and rights related to AI-generated inventions
  
• Balancing AI’s role in invention with human accountability and creativity
  

International Reactions and the Future of AI Inventorship

The decision in the Thaler case is part of a broader global conversation about AI and its legal status in patent systems. As mentioned earlier, other jurisdictions, including Australia and South Africa, have taken a more progressive stance, accepting AI as the inventor in patent applications. This divergence in international patent practices suggests the possibility of jurisdictional fragmentation, with different countries adopting differing approaches to AI inventorship.

Looking forward, it is likely that the UK and other countries will be forced to reconsider their positions on AI inventorship, especially as AI systems become more sophisticated and ubiquitous in research and development. The European Union is already considering how to adapt its patent laws to deal with AI, and the United States is experiencing similar debates regarding the legal status of AI-created inventions.

Conclusion: A New Legal Frontier

In conclusion, the Thaler v Comptroller-General case highlights the complex legal and ethical issues at the intersection of AI and intellectual property law. While the UK courts’ decision is grounded in established legal principles, it also exposes the limitations of the current legal framework to adequately address the realities of AI-driven innovation. As AI continues to evolve, it is likely that patent laws will undergo significant revisions, both in the UK and globally, to better reflect the role AI plays in shaping the future of innovation.

Ultimately, the future of AI and inventorship will depend on the ability of legal systems to balance the protection of human creativity with the recognition of AI’s potential to drive technological advancement. In this way, the Thaler case is not the end of the conversation but rather a beginning—ushering in a new frontier where AI’s role in the creative process must be carefully considered in the context of both law and technology in  legal .

Reference(S)

Cases 

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 (Ch)

Legislation 

Patents Act 1977

Books

Lionel Bently and Brad Sherman, *Intellectual Property Law* (5th edn, Oxford University Press 2018)

David Vaver, *Intellectual Property Law: Copyright, Patents, Trade Marks* (5th edn, Oxford University Press 2021)

Journal Articles

Ryan Abbott, ‘The Artificial Inventor Project’ (2020) 105(4) *Northwestern University Law Review* 1085

Ryan Abbott, ‘Artificial Intelligence and Patent Law’ (2020) 39(4) *Journal of Intellectual Property Law & Practice* 271

Online Articles 

Julia McCoy, ‘Unlock the AI and Copyright Puzzle: Who Owns Your AI Content?’ (Content Hacker, 2023) <https://contenthacker.com/ai-and-copyright/> accessed 29 October 2024

DS, ‘Who Owns AI-Generated Content? Navigating Credit and Ownership in the Age of Artificial Intelligence’ (Designsensory, 2024) <https://designsensory.com/insights/ai-ownership/> accessed 29 October 2024

Neville, ‘Ownership of AI-Generated Content in the UK’ (A&O Shearman, 2024) <https://www.aoshearman.com/en/insights/ownership-of-ai-generated-content-in-the-uk> accessed 29 October 2024

Aleksandra Jarosz, ‘Who Owns the Content Produced By Artificial Intelligence Platforms?’ (LinkedIn, 2023) <https://www.linkedin.com/pulse/who-owns-content-produced-artificial-intelligence-platforms-jarosz/> accessed 29 October 2024