UK: Patents artificial intelligence machine cannot be inventor

Background

"Any person" may make an application for a patent either alone or jointly with another (section 7, 1977 Act) (section 7). A patent for an invention may only be granted to: the inventor, any person entitled to the whole of the property in an invention, or their successors in title (section 7(2)). "Inventor" in relation to an invention means the actual deviser of the invention (section 7(3)).

In Rhone-Poulenc Rorer International Holdings Inc v Yeda Research & Development Co Ltd, the House of Lords held that section 7 exhaustively determines who is entitled to the grant of a patent and that the actual deviser of the invention is the natural person who came up with the inventive concept (www.practicallaw.com/0-379-7623).

An applicant for a patent must file with the IPO a statement identifying the person or persons whom they believe to be the inventor (section 13 (2)(a), 1977 Act) (section 13(2)(a)). If the applicant is not the sole inventor, the statement must also indicate the derivation of their right to be granted the patent (section 13(2)(b)). Failure to do so will result in the application being deemed withdrawn.

Facts 

T filed two patent applications in his own name. The accompanying form stated that T was not an inventor of the inventions specified in the applications. 

T filed statements of inventorship for both applications stating that the inventor was an AI machine called DABUS and that T had acquired the right to grant of the patents in question by virtue of his ownership of DABUS. 

The IPO decided that a natural person had to be identified as the inventor and that the naming of a machine as inventor did not meet the requirements of the 1977 Act. As it was not a person, it could not own IP so had nothing to transfer to T, and the law did not provide for any IP rights to be owned by the owner of the machine. T appealed.

The Patents Court dismissed the appeal (www.practicallaw.com/w-028-0539). T appealed. 

Decision

The court dismissed the appeal. It held that T had not complied with either of the requirements laid down by section 13(2) and so T’s patent applications were deemed to be withdrawn. 

Only a person can be an inventor under the 1977 Act. It is clear from Yeda v Rhone-Poulenc that section 7 provides an exhaustive code for determining who is entitled to the grant of a patent and so only a person can be entitled under section 7(2). That interpretation is supported by the wording of section 2(4) and section 8. In addition, section 13 confers a right on the inventor or joint inventors. Only persons can have rights and it follows that inventors have to be persons.

Under section 13, an applicant is also required to identify the person or persons whom they believe to be the inventor or inventors. It is implicit in that that only persons can be inventors. The IPO and the Patents Court had been correct to hold that the machine did not qualify as an "inventor" under section 7(2) because it was not a person.

T had claimed that he was, at the time of the making of the inventions, entitled to the whole of the property in them by virtue of a rule of law, and therefore was entitled to apply under section 7(2). However, an invention is a piece of information, and there is no property in information, even if it was confidential. Where section 7(2) refers to the whole of the property in the invention, the property referred to is the right to apply for and obtain a patent in respect of that invention. T relied on the common law doctrine of accession. According to that doctrine, the owner of pre-existing tangible property owns new tangible property which is produced by the existing tangible property, but there is no suggestion that the rule applies to intangible property produced by tangible property.

There is no rule of law that a new intangible produced by existing tangible property is the property of the owner of the tangible property, and so no rule that the property contemplated by section 7(2) in an invention created by a machine is owned by the owner of the machine. As T had argued that the machine had made the inventions, he was not entitled to apply for patents.

Statements of inventorship and entitlement filed by the applicant under section 13(2) do not need to be examined by the Comptroller of the IPO to determine whether they are well-founded. However, if the requirements imposed by section 13(2) are not complied with, the application has to be deemed withdrawn.

The same approach applies to the requirement imposed by section 13(2)(a). The Comptroller's function is to check whether the prescribed statements have been filed in time, and if so whether the statements filed comply with the statutory requirements or are defective on their face. Here, T had not identified the person or persons whom he believes to be the inventor or inventors as required by section 13(2)(a). Instead, he deliberately identified a non-person as the inventor, which was a legal impossibility. Nor did T identify the derivation of his right to be granted the patent as required by section 13(2)(b). He simply asserted that it was sufficient that he owned the machine, but legally that was incorrect.

Comment

The patentability of an AI-generated invention has not been tested by the court here as the applications were deemed withdrawn because of the failure to identify a human inventor. This decision highlights the difficulties in trying to accommodate AI-generated inventions into a patent regime that did not anticipate the emergence of non-human inventors. Where the inventive concept of the patent is something that an AI system has developed itself based on knowledge acquired through machine learning, it may be difficult if not impossible to identify a human as the actual deviser of the invention.

The European Patent Office came to a similar decision in January 2020 in refusing two patent applications as they named the AI system DABUS as inventor.  The government may legislate on this issue following its upcoming consultation on a range of policy options for protecting AI-generated inventions. One potential solution would be to follow copyright law, which designates the author of a computer-generated work as the person by whom the arrangements necessary for the creation of the work are undertaken.

Case: Thaler v Comptroller-General of Patents, Designs and Trade Marks [2021] EWCA Civ 1374