Can Artificial Intelligence be an Inventor under Patent Law? UK Court of Appeal says ‘No’

Dr Stephen Thaler’s worldwide journey for an artificial intelligence (“AI”) to be recognised as an inventor under patent law has hit another roadblock. On 21 September 2021, the UK Court of Appeal in Stephen Thaler v Comptroller General of Patents Trade Marks and Designs [2021] EWCA Civ 1374 (“the UK case”) held among others that only a person can be an inventor under the UK Patents Act 1977 (“UK Patents Act”), and since an AI is not a person, it cannot be named as an inventor of a patent. Dr Thaler had previously obtained judicial decisions from Australia, where he succeeded, and the US, where he was unsuccessful (our commentaries on these cases can be accessed here and here).
The background facts in the UK case are similar to the facts in Australia and the US because it involves the same actors and factual matrix. Briefly, Dr Thaler had named the AI known as DABUS as the inventor in his patent applications before the UK Intellectual Property Office (“UKIPO”). Dr Thaler’s applications were subsequently deemed to be withdrawn by the UKIPO for failing to comply with section 13 of the UK Patents Act. Dr Thaler appealed against the UKIPO decision to the High Court. Dr Thaler’s appeal to the High Court was dismissed resulting in the subsequent appeal to the Court of Appeal.
The Decision in the UK case
Dr Thaler’s appeal to the Court of Appeal was dismissed by a 2-1 majority with Lord Justice Birss dissenting. However, in Lord Justice Birrs’ dissenting judgment, the issue was not whether an AI could be an inventor under the UK Patents Act. On this issue, all three judges including Justice Birss agreed that only a person can be an inventor for the purposes of the UK Patents Act.
All three appellate judges concurred that based on an interpretation of the UK Patents Act, in particular Section 7, only a person can be an inventor. Since an AI is not a “person”, it cannot be an inventor. The statutory interpretation exercise conducted by Lord Justice Arnold at paragraph 116 of the judgment can be summarised as follows: 

  • the starting point is section 130(1) which provides that “inventor” has the meaning assigned to it in Section 7; 

  • section 7(3) provides that “inventor” in relation to an invention means the actual deviser of the invention; 

  • based on the Oxford English Dictionary, the dictionary definition of “deviser” is “a person who devises; a contriver, a planner, an inventor”; 

  • section 7(2) provides that a patent may be granted “(a) primarily to the inventor or joint inventors”; “(b) in preference to the foregoing, to any person or person who … 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) “the successor or successors in title of any person or persons mentioned in (a) or (b) above”, but “to no other person”. 

  • section 7(4) creates a presumption that “a person who makes an application for a patent shall be taken to the person who is entitled under subsection (2) above to be granted a patent”. 
Although Lord Justice Birrs agreed that only a person could be an inventor under the UK Patents Act, the dissenting judgment is in respect of the scope of the UKIPO Comptroller’s power in deeming Dr Thaler’s application withdrawn for non-compliance under Section 13(2) of the UK Patents Act. Section 13(2) provides as follows:
(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.

Lord Justice Birrs held that Dr Thaler had complied with Section 13(2) because Dr Thaler had named whom he believed to be the inventor i.e. DABUS and indicated the derivation of his rights by stating that he owned and operates DABUS. As such, Dr Thaler had satisfied the requirements of Section 13(2). Thus, the Comptroller did not have the power to deem Dr Thaler’s applications withdrawn, and essentially determining that Dr Thaler was not entitled to the grant of the patent.
The majority judgment of Lord Justice Arnold and Lord Justice Laing disagreed with the dissenting position, and instead held that the Comptroller had rightly exercised his power under Section 13(2) because Dr Thaler had failed to comply with the requirements in Section 13(2) by naming a non-person as the inventor.
The decision in the UK case further emphasises the need for legislative amendments to the patent regime to deal with AI inventions. Dr Thaler’s DABUS cases in various jurisdictions around the world have shown that courts are ultimately limited by the four corners of the statute. Patent statutes were simply not drafted in contemplation of the existence of AI.
The UKIPO has been taking steps to organise public consultations on the interaction between AI and IP. One of the ongoing public consultations by the UKIPO is on the question of whether AI-devised inventions should be protected, and if so, how they should be protected. Thus, there may be further developments in this area in the UK in the near future. Any developments in the UK will serve as a good reference to the Malaysian context since the Malaysian Patents Act is similar to the UK Patents Act in terms of clear language which envisions an inventor to be a person only.
Commentary by Lam Rui Rong (Associate) of the Intellectual Property Practice of Skrine.

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