UK Court of Appeal rejects DABUS patent application

By a majority 2-1 decision (Arnold and Laing LJJ in the majority and Birss LJ dissenting) the Court rejected Dr Thaler’s appeal and upheld the decisions of the UKIPO hearing officer and Smith J that a UK patent cannot be granted where an AI system is named as the inventor. Dr Thaler had applied for two GB patents, stating that the inventor was “DABUS” and that he had the right to be granted the patents “by ownership of the creativity machine ‘DABUS’”. When challenged by the UKIPO, Dr Thaler had stated “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 The applications were deemed withdrawn by the UKIPO on the basis that DABUS could not be considered an inventor and Dr Thaler was not entitled to apply for the patents. He had therefore failed to comply with the requirement under section 13(2) of the Patents Act 1977 to file a statement “(a) identifying the person or persons whom he believes to be the inventor or inventors; and (b) … indicating the derivation of his or their right to be granted the patent”.

The three issues to be decided on appeal were summarised by Birss LJ as:

1. Does the Patents Act 1977 require that an inventor be a person?
2. What is section 13 of the 1977 Act for, and how does it work?
3. What is the right response to the information Dr Thaler has provided under section 13(2)?

Is an inventor required to be a person?

On this ground the Court of Appeal was agreed; the Patents Act defines an inventor as the “actual deviser” of an invention and the Act had been drafted on the footing that only a person could be the actual deviser. Birss LJ reached this conclusion through a review of the origins of the term ‘actual deviser’ in UK patent law along with an analysis of the way the language of the Patents Act 1977 is…