DABUS Defeated Again—But Judges Divided

By James Nurton
September 22, 2021

“Lord Justice Arnold said that Dr. Thaler did not identify in the applications ‘the person or person whom he believes to be the inventor or inventor’ as required in (a) but instead deliberately identified a non-person as the inventor: ‘The answer he gave to the question was a legal impossibility.’”

https://depositphotos.com/168275348/stock-photo-artificial-intelligence-idea.htmlThe England and Wales Court of Appeal has upheld lower rulings that two patent applications designating an artificial intelligence called DABUS as the inventor were deemed to be withdrawn. (Thaler v Comptroller General of Patents Trade Marks And Designs [2021] EWCA Civ 1374.)

However, the three judges were split, with the two patent specialists on the panel taking different views.

Dr. Stephen Thaler filed two UK patent applications in October and November 2018 for a “Food Container” and “Devices And Methods For Attracting Enhanced Attention” respectively. Parallel applications have been filed in many other jurisdictions, as reported previously by IPWatchdog.

In the applications, Dr. Thaler stated that he was not the inventor of the inventions and the inventor was the creativity machine DABUS, which he owned. Following a hearing in November 2019, the UK IPO found that DABUS was not a person envisaged by the Patents Act, and the patents should be deemed to be withdrawn. Mr. Justice Marcus Smith in the High Court upheld this decision on September 21 2020.

In the Court of Appeal judgment exactly one year later, Lord Justice Arnold and Lady Justice Elisabeth Laing dismissed Dr Thaler’s appeal. However, Lord Justice Birss would have allowed it.

Judges Divided

The decision essentially boiled down to the interpretation of Section 13(2) of the Patents Act 1977, which concerns inventors. It states:

… 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and, if he fails to do so, the application shall be taken to be withdrawn.

In his opinion, Lord Justice Arnold said that Dr. Thaler did not identify in the applications ‘the person or person whom he believes to be the inventor or inventor’ as required in (a) but instead deliberately identified a non-person as the inventor: “The answer he gave to the question was a legal impossibility.”

Nor did he identify ‘the derivation of his right … to be granted the patent’ as required in (b) but simply asserted that it was sufficient that he owned DABUS. “As a matter of law, that is incorrect,” wrote Lord Justice Arnold. The answers given by the applicant could be taken at face value, with no need to evaluate whether they were factually accurate.

Lord Justice Arnold concluded that Dr. Thaler did not comply with either requirement in Section 13(2) and the applications were rightly deemed to be withdrawn: “This is not to introduce some new, non-statutory ground for refusing patent applications. On the contrary, it gives effect to the statutory requirements that (i) the inventor must be a person and (ii) an applicant who is not the inventor must be able, at least in principle, to found an entitlement to apply for a patent in respect of the invention.”

Lord Justice Birss interpreted Section 13(2) differently. He found that Dr. Thaler had not identified a person as an inventor because he believed there was no human inventor. He had therefore complied with (a) and was not obliged to include the name of the inventor. Dr. Thaler also complied with (b) because he contended that “he created, owns and operated DABUS and there is a rule of law whereby the owner and operator of a machine which creates inventions is entitled to the right to apply for and be granted a patent for an invention created by that machine.” Dr. Thaler therefore had the right to apply for and be granted the patent; if anyone else thinks they have a better right, there are mechanisms for them to challenge that after it is published.

Lord Justice Birss conceded that his interpretation meant that Dr. Thaler’s right might never be tested, but said that is a consequence of the drafting of the Act. He added: “US patent law can involve arguments about fraud on the Patent Office. It would not be a welcome step to introduce them in this jurisdiction.”

Lady Justice Elizabeth Laing agreed with Lord Justice Arnold that the applicant’s statement did not indicate a derivation of the relevant right. She also wrote: “Dr. Thaler has not complied with section 13(2)(a) because (a) he has not identified the person he believes is the inventor, and (b) he has positively asserted, instead, the inventor is not a person.”

Next Steps

Professor Ryan Abbott of Surrey University represents Dr. Thaler and is the author of The Reasonable Robot: Artificial Intelligence and the Law. In an email to IPWatchdog, he said:

While we would of course to have preferred the appeal to have been allowed, we were very encouraged by the dissent of LJ Birss who agreed with us that “the creator of the inventions in this case was a machine is no impediment to patents being granted to this applicant…” and he would have allowed the appeal. We respectfully believe this was the correct interpretation of the current state of UK law.

He added that an appeal to the UK Supreme Court is planned. The Supreme Court can decide whether to hear the case; the fact that the Court of Appeal was split may be one factor in favor of doing so.

In another comment on the case, Ed White, Head of Analytics, IP Group at Clarivate, said the decision could be seen as “undermining the UK’s bold plans to lead the way on AI regulation.” White said the ruling also acts as “a reality check” on the recent wins for DABUS in South Africa and Australia, particularly with the Australian case going to appeal. However, Lord Justice Birss’ dissent does provide some hope. He added:

While Judge Birss’ views have not won out today, they do present a significant and notable dissent which may be drawn on in the future should similar cases reach the Court of Appeal or Supreme Court. Legal change takes time. But some form of change does still seem to be inevitable with the reality being that AI has fundamentally, and permanently, disrupted the invention process and playing an ever more central role in product design and development.

You can read all the IPWatchdog coverage of the various cases involving DABUS here.

Image Source: Deposit Photos
Author: phonlamai
Image ID: 168275348

The Author

James Nurton

James Nurton is a freelance journalist and editor, based in London, United Kingdom. He was previously editor of Managing Intellectual Property magazine and has worked on publications and events for AIPPI, AIPLA, INTA, WIPO, the EPO and EUIPO. He is editorial consultant to MARQUES and a partner of Lextel, which provides editorial and thought leadership services to law firms.

For more information or to contact James, visit his Firm Profile Page.

Warning & Disclaimer: The pages, articles and comments on IPWatchdog.com do not constitute legal advice, nor do they create any attorney-client relationship. The articles published express the personal opinion and views of the author as of the time of publication and should not be attributed to the author’s employer, clients or the sponsors of IPWatchdog.com. Read more.

Discuss this

There are currently 7 Comments comments. Join the discussion.

  1. MaxDrei September 22, 2021 3:23 pm

    Having followed the blogs on this case, I get the feeling that the learned and specialist patents judges Arnold and Birss, in this English Appeal Court Decision, with their divergent opinions, have set the case up nicely for the UK Supreme Court to issue a definitive final judgement on the question at issue. I have to say that it is a pleasure to read the opinion of Judge Colin Birss, that an AI can be an inventor, because it leaves me with the feeling that he has been following the various blog threads with at least as much attention as me.

    Whatever Decision the UK Supreme Court hands down will be based (of course) on the law of the UK as it is now. I don’t know any other jurisdiction that has exactly the same law. Nevertheless, what Birss, LJ writes will, I predict, be persuasive not only at the UK Supreme Court but also for appeal courts in certain other jurisdictions (even if, in the USA, it carries no persuasive effect and further suffers the indignity of being roundly deprecated).

  2. Mark Summerfield September 23, 2021 7:42 am

    I disagree with the premise of this article that the judges are actually ‘divided’, at least on the issue that actually matters to Dr Thaler and his backer, Professor Ryan Abbott.

    Lord Justice Birss is in furious agreement with the other judges that DABUS, being a machine not a person, cannot be an ‘inventor’ under the UK Patents Act 1977. This is apparent, at least, from paragraph [53] of the judgment:

    <blockquote)However within the terms of the 1977 Act DABUS is not the actual deviser because that is and can only be the person who actually devised the invention. In fact the Deputy Director’s decision does not really concede that DABUS is the actual deviser. What is accepted at paragraph 21 is that DABUS created the invention. (Emphasis in original.)

    Where Birss LJ deviates from the other judges is that, in his view, this is irrelevant. He reasons that, no matter how deluded (actually, he uses the word ‘obsessive’, at [81]) Dr Thaler may be, he has fulfilled his obligations under the Act by identifying the entity that he believes to be the inventor, and asserting his own right to apply for a patent. The Act permits anyone to apply and, in the view of Birss LJ, provides the Comptroller of Patents with no basis to challenge the applicant’s right in the absence of evidence to the contrary (e.g. another party claiming a superior right).

    As Birss LJ acknowledges (at [81]), ‘Dr Thaler’s claim to the right may well never be tested’. Apparently, he finds that acceptable, as a consequence of the scheme of the Act. In reality, however, all it does is kick the can down the road. If the UK IP Office has no power to reject applications that do not satisfy basic legal requirements, including that the inventor is a ‘person’, then that merely opens the door to the grant of invalid (or, at least, unenforceable) patents that can only be challenged at great expense in the national courts.

    If Birss LJ has his way, then despite the fact that all are in agreement that machines cannot be inventors, invalid/unenforceable patents should be granted regardless, because the Act does not authorise the UK IP Office to act as gatekeeper.

  3. Max Drei September 23, 2021 10:18 am

    Mark, I’m not sure I can agree with you. The way I read Birss, he is not asserting that an AI will never be able to “invent” patentable matter. Rather, he is accepting the reality, that the current UK patent statute does not admit that possibility.

    Patent statutes are careful to avoid defining what an “invention” is. From now on, they will have to be at least as thoughtful about the notion of an “inventor” and perhaps cater for the possibility that in some cases the nearest thing to an “inventor” will be an AI, and so define “inventor” accordingly. Or not?

  4. James Nurton September 24, 2021 6:04 am

    I agree the split between the judges (both highly experienced patent experts) on Section 13(2) may sway the Supreme Court to hear the case.

    If it does so, then Lord Kitchin – another patent specialist – will likely play a pivotal role. Its a topic he’s very well informed about – his speech on AI from a UKIPO/WIPO conference in 2019 is well worth reading: https://www.supremecourt.uk/docs/speech-190618.pdf

    Having said that, the judges are clearly constrained by the wording of the statute. Ultimately, if this issue is going to be addressed it will probably have to be through legislative change – though that will take many years!

  5. Anon September 25, 2021 8:59 am

    I am amused (and delighted) with Mr. Nurton’s addition of the speech of Lord Kitchin. While this is the first that I have come across this piece, I find that it echoes** MANY of my own independent thrusts on this (and other) blogs – thrusts to which many of those such as MaxDrei and Mark Summerfield have failed to engage.

    **I say echoes rather than presages as the aligned comments were indeed published by me prior to this June 2019 presentation.

  6. MaxDrei September 28, 2021 5:08 am

    Yes, I too had not seen the June 2019 address from David Kitchen to WIPO, and I urge all interested readers to click on the Link very helpfully provided by James Nurton at Comment #4.

    Kitchen has spent his entire career as a patent jurist, beginning as a litigator (UK barrister, then QC, appearing just as often for the Party accused of infringement as for the rights owner) before switching to the bench to try IP cases, then ascending to the UK Supreme Court where he is the current resident IP judge expert.

    What David Kitchen thinks is therefore worth reading. Perhaps he even reads the blogs and derives his wisdom from them. Who knows, these days?

  7. Anon September 28, 2021 7:37 pm

    Perhaps he even reads the blogs and derives his wisdom from them. Who knows, these days?

    In complete contrast to your own views of my posts, such would not be the first time.

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