UKIPO and High Court
Court of Appeal
Lord Justice Birss's dissenting judgment
Artificial intelligence (AI) technologies are increasingly prevalent in the healthcare sector. AI systems are being employed more and more in medical diagnostics and drug discovery and development, with potential future applications such as robotic surgery, supporting clinical trials, digitalising pathology images and digital therapeutics (in the form of apps or software) being proposed. Of course, the adoption of AI systems is not limited to high-tech industries – many of us now use AI-based technology in our day-to-day lives in the form of digital smart assistants or chatbots. This growing adoption of new AI technologies has raised questions as to whether patent laws are equipped to deal with these new innovations.
An often-discussed issue is whether an AI system can be named as an inventor of a patent. The Court of Appeal has handed down a highly anticipated judgment concerning an appeal filed by Stephen Thaler, owner of an AI-machine named "Dabus". Thaler is seeking to register patents for inventions derived from Dabus, with Dabus named as the inventor. The Court of Appeal upheld the decision of the High Court, finding that only a person can be an inventor, and that, as Thaler accepts that he is not the inventor, he has no entitlement to the patent. In the Court of Appeal decision, Lord Justice Arnold referred to this case as a "test case", but the principles considered in this case are not sector specific, and with the increasing adoption of AI in the life sciences sector, the ultimate resolution of the issues raised by this litigation, whether by judicial determination or legislative change, is likely to have a wide impact.
In reality, this decision does not move the law forward, but it does pave the way for an appeal to the Supreme Court and, ultimately, a review of the legislation is expected to ensure that patent laws can accommodate AI-generated inventions.
Thaler has been arguing across several jurisdictions that the owner of AI systems should be the default owner of patents for inventions derived from machines, and that it should be possible to name those AI systems as inventors on patent applications. While the global context of this project is important, a discussion of the proceedings in the European Patent Office (EPO) and other jurisdictions is outside the scope of this article, and this piece will focus on the UK proceedings.
Before turning to the procedural background, the relevant provisions of the Patents Act 1977, section 7 and section 13, should be considered:
- Section 7 sets out the right to apply for and obtain a patent. Any person may make an application for a patent (section 7(1)). A patent may be granted to:
- the inventor or joint inventors (section 7(2)(a));
- any person who, at the time of the making of the invention, was entitled to the whole of the property in it in the United Kingdom (section 7(2)(b)); or
- any successors in title to persons in sections 7(2)(a) or 7(2)(b) (section 7(2)(c)).
"Inventor" means the actual deviser of the invention (section 7(3)). A person who makes an application for a patent shall be taken to be the person who is entitled under section 7(2) to be granted a patent, unless the contrary is established (section 7(4)).
- Section 13(1) sets out the right of an inventor to be mentioned in a granted patent and in any published application for the patent. Under section 13(2), an applicant must, within a prescribed period, file a statement of inventorship with the UK Intellectual Property Office (IPO) that:
- identifies the person(s) whom the applicant believes to be the inventor(s) (section 13(2)(a)); and
- where the applicant is not the sole inventor or the applicants are not the joint inventors, indicates the derivation of their right to be granted the patent (section 13(2)(b)).
If the applicant fails to do so, the application shall be taken to be withdrawn.
In 2018, Thaler filed two patent applications with the UKIPO, one in relation to a particular food container, the other a light-emitting device, which were purported to have been generated by Dabus. In the supporting documentation (the request for grant form), he stated that he was not the inventor. He subsequently filed a statement of inventorship, naming Dabus as the inventor, and stating that he had the right to be granted a patent "by ownership of the creativity machine 'DABUS'". He later filed a declaration that "the applicant identified no person or persons whom he believes to be an inventor as the invention was entirely and solely conceived by DABUS".
The UKIPO declared that the applications were to be withdrawn, on the grounds that section 13(2) had not been satisfied as Dabus was not a "person" for the purposes of identifying the inventor, and that Thaler was not entitled to apply for the patents.
Thaler appealed the UKIPO's decision. The High Court dismissed the appeal, with Mr Justice Marcus Smith holding that the natural meaning of section 7(3) was that:
- the inventor was a person;
- the Patents Act 1977 as a whole is on the footing that patents can only be granted to persons; and
- the classes to whom a patent may be granted as set out in section 7(2) concerned the transfer of a right that originally vested in the inventor, the inventor itself being capable of holding and transferring property.
Therefore, Thaler could not acquire the right to be granted a patent via section 7(2)(b) or 7(2)(c) because Dabus is not a person and therefore could not be an inventor.
The judge also rejected Thaler's submission that section 13 does not permit the Comptroller to use the section as a mechanism to refuse a patent application by refusing to accept a statement of inventorship which honestly and correctly identified Dabus as the actual deviser of the invention and indicated how Thaler derived the right to the patent. He therefore dismissed the appeal.
Thaler further appealed to the Court of Appeal. The case was heard by two of the United Kingdom's leading patent judges, Lord Justice Arnold and Lord Justice Birss, sitting alongside Lady Justice Laing. The Court of Appeal dismissed the appeal by a majority, with Lord Justice Arnold and Lady Justice Laing in agreement. However, of interest is the fact that Lord Justice Birss dissented and argued that he would have allowed the appeal.
The focus of the debate had shifted by the time the case reached the Court of Appeal, and the core issues were as follows:
- Does the Patents Act 1977 require an inventor to be a person?
- Was Thaler entitled to a patent, what is the purpose of section 13, and how does section 13 work?
- What is the right response to the information Thaler provided under section 13(2)?
Must an inventor be a person?
All three judges agreed that only a person can be an "inventor" under the Patents Act 1977. In considering this question, Lord Justice Birss undertook a detailed review of historical patent legislation, starting with the Statute of Monopolies 1623, through to the modern Patents Act 1977. He concluded that the answer to this question was simple: within the meaning of the Patents Act 1977, the "inventor" is the person who actually devised the invention. Arnold LJ and Laing LJ both agreed that it is clear from the statute that only persons can be inventors. They therefore concluded that the UKIPO and High Court had been correct to hold that Dabus did not qualify as an inventor because it is not a person.
Section 13: purpose and operation
The disagreement came about as to the correct application of section 13(2)(a) and section 13(2)(b).
Application of section 13(2)(a)
Section 13(2)(a) provides that Thaler was required to file a statement of inventorship that identifies the person he believes to be the inventor. Lord Justice Arnold and Lady Justice Laing agreed that section 13(2)(a) required more than the inventor simply stating their subjective beliefs as to the inventor's identity. In the words of Lady Justice Laing:
Rather, it expressly requires the applicant to identify the person who, he believes, is the inventor. That is a different requirement, and it is not met by a statement that the applicant genuinely believes that the invention was devised by a machine.
Lady Justice Laing agreed that section 13(2)(a) expressly requires the applicant to identify the person who they believe is the inventor, rather than "state their genuine belief about who the inventor was". She said that "it does not follow . . . that if an applicant . . . positively asserts that the inventor is not a person, the applicant has complied with the requirements of section 13(2)(a)".
The Court therefore held that Thaler had not complied with his obligations under section 13(2)(a).
Application of section 13(2)(b)
Where the patent applicant is not the inventor, section 13(2)(b) requires the applicant to indicate the derivation of their right to be granted the patent.
Thaler argued that as the owner of Dabus, he had the right to apply for a patent by virtue of the common law doctrine of accession, which therefore fell within the scope of section 7(2)(b) and meant that he was entitled to apply for the patent.
The doctrine of accession provides that a person who has exclusive possession of a tangible item that produces a new tangible item will have exclusive possession over the new tangible item (for example, the owner of a tree also owns the fruit which falls from the tree). Arnold LJ, however, considered this reasoning did not translate to the situation where intangible property is produced by tangible property, because intangible property is non-rivalrous (meaning it can be consumed multiple times, not just once). Thus, the new intangible property is not susceptible to exclusive possession. In making his assessment Arnold LJ cited a number of cases that confirm that there is no property in information under English law.
Arnold LJ concluded that there is no rule that the property contemplated by section 7(2)(b) in an invention created by a machine is owned by the owner of the machine. There was therefore no rule of law which conferred Thaler the right to apply for patents created by Dabus, and so the requirement under section 13(2)(b) had not been met.
Laing LJ further concluded that if Dabus was not an inventor within the meaning of the Patents Act 1977, and therefore if Dabus could not own the property in the invention, then this property could not have been transferred to Thaler.
The Court therefore held that Thaler had failed to identify how he had derived his right to be granted the patent under section 13(2)(b).
Did Thaler comply with section 13(2), or was the UKIPO right to deem the applications withdrawn?
By a majority, the Court found that Thaler had failed to comply with the requirements of section 13(2).
There was unanimous agreement that section 13(2) was intended to ensure that genuine errors in identifying an inventor, or the derivation of the applicant's right to apply for a patent, should not prevent the applicant from obtaining a patent or render any patent liable to revocation. The Court also held that section 13(2) did not operate to enable the Comptroller to verify the information the applicant submitted in their patent applications.
Furthermore, Arnold LJ held that the Comptroller's role is "to check whether the prescribed statements have been filed in time, and if so whether the statements filed appear to comply with the statutory requirements or are defective on their face".
Thaler had not identified the person he believed to be the inventor and had instead "deliberately identified a non-person as the inventor" as required by section 13(2)(a). He had also not identified the derivation of his right to title pursuant to section 13(2)(b). He had therefore failed to provide the requisite information under section 13(2), and as such the applications were deemed withdrawn.
Lord Justice Birss's dissenting judgment
Although there was agreement that the Patents Act 1977 requires an inventor to be a person, it was the operation of section 13, and whether Thaler had provided enough information to discharge his obligations under section 13(2) which caused disagreement, with Lord Justice Birss dissenting.
In his view, the case related to the correct way to process patent applications through the UKIPO. In a nod towards the subject matter of this case and the fact that it forms part of a wider, global project seeking to establish that AI systems can invent, and owners of those systems can own any resulting patents, he said that "[I]t is an object lesson in the risks of advocacy being distracted by glamour".
Birss LJ said that, in his view, the requirements under section 13(2)(a) were fulfilled simply by providing the information required honestly (ie, the applicant must identify who they believe is the inventor). Assuming a coherent explanation was given for being unable to name the person, he would hold the language of section 13(2)(a) to be satisfied. Therefore, as Thaler had complied with his obligations under this section, by honestly reflecting his belief, Birss LJ considered that Thaler had satisfied section 13(2)(a).
He also determined that the requirements of section 13(2)(b) were satisfied. He considered that the purpose of section 13(2) was simply to give the UKIPO information which will be made public, not to require or facilitate examination of the applicant's claimed right to be granted the patent. By giving an indication of the derivation of his right to be granted the patent – namely, under section 7(2(b) because he created, owns and operated Dabus, and there is a rule of law that the creator and owner of a machine that creates inventions is entitled to apply for and be granted a patent for any inventions created by that machine – in Birss LJ's view, Thaler had complied with section 13(2)(b).
He noted that there is no one with a better right than Thaler to be granted a patent for those inventions created by Dabus, but if there was, they could challenge his entitlement, although in reality it would not be tested as entitlement can be challenged only by a person claiming a right to the patent. He therefore acknowledged that Thaler's claim to the right may therefore never be tested but that this consequence was built into the legislation for policy reasons.
He would therefore have allowed the appeal.
The overall finding of the Court of Appeal's judgment is unsurprising. It reaffirms the current legal position that AI machines cannot be "inventors" for the purposes of the Patents Act 1977, as machines are not "persons". There has been much debate around the limitations of the current legislation in the context of developing technologies such as AI. However, Arnold LJ said that the court was bound to "apply the law of the United Kingdom . . . as it presently stands" and that its consideration of Thaler's case was "not an occasion for debating what the law ought to be". As Laing LJ further acknowledged, "if patents are to be granted in respect of inventions by machines, the 1977 Act will have to be amended". While not moving the law forward, this decision appears to affirm the fact that legislative change is likely to be necessary.
What is of significant interest, however, is the fact that two of the United Kingdom's leading patent judges disagreed on the real, underlying dispute as to the application of section 13. Birss LJ argued that this case was really concerned with properly providing the correct information to the UKIPO when making an application for a patent. He indicated that the excitement surrounding evolving technologies like AI, and the moral implications associated with the prospect of machines being named as inventors, had detracted from the real dispute.
It is clear that the Court of Appeal's decision is unlikely to be the end of the road, and it is likely that Thaler will seek leave to appeal to the Supreme Court. To date, the Court of Appeal is the highest court across the world to have heard this case, and if leave to appeal is granted, the case would likely reach the UK Supreme Court before that of any other jurisdiction. Any decision of the Supreme Court, while not binding in other jurisdictions, would nevertheless carry weight and puts the United Kingdom at the forefront of determining this issue.
However, the Supreme Court is unlikely to hear this case for at least another two to three years, and it is perhaps a race to see what will come first: judicial or legislative change? The pervading view is that legislative change is likely to allow patent laws to accommodate evolving AI technologies. In September 2021, the UK Government published its National AI Strategy, a 10-year plan to help the United Kingdom "strengthen its position as a global science superpower and seize the potential of modern technology to improve people's lives and solve global challenges such as climate change and public health". Under the National AI Strategy, and following publication of the response to the UKIPO's AI and IP call for views earlier in 2021, the UKIPO committed to, among other things, consult on the extent to which copyright and patents should protect AI-generated inventions and creative works. The strategy sets out that that this consultation will be launched before the end of the year "so that the UK can harness the opportunities of AI to further support innovation and creativity". It therefore seems that it is not a matter of if, but when, legislative change occurs.
There is a great potential for AI to enable innovation in life sciences over the next ten years, which is recognised by the National AI Strategy. The NHS AI Lab, established in 2019, aims to "provide a facilitative environment to enable the health and social care system to confidently adopt safe, effective and ethical AI-driven technologies at pace and scale" in collaboration with other partners. In line with the National AI Strategy, the NHS AI Lab will create a national strategy for AI in health and social care, which is expected to launch in early 2022. This will consolidate the system transformation achieved by the NHS AI Lab to date and will set the direction for AI in health and social care up to 2030.
There was an acknowledgement in the judgment that this dispute raised broad issues of global interest and such legislative changes are not expected to be limited to the United Kingdom. The continuing WIPO conversation on AI and IP indicates that global policy changes are ultimately likely. However, a UK Supreme Court decision may further expedite a change to UK legislation, and it would put the United Kingdom on the way to achieving one of the aims of the National AI Strategy, and become a world leader in this field.
For further information on this topic please contact Mark Marfé, Sarah Taylor or Sian Banks at Pinsent Masons by telephone (+44 20 7418 8250) or email ([email protected], [email protected] or [email protected]). The Pinsent Masons website can be accessed at www.pinsentmasons.com.