The court said that to list a non-human on a patent would fly in the face of core tenets of U.K. intellectual property law. (iStock.com/Guillaume)
Delivering the judgment, retired Justice David Kitchin noted that listing a non-human on a patent would fly in the face of core tenets of U.K. intellectual property law, including the Patent Act 1977, which states that only a "natural person" could be considered an inventor.
DABUS "is not a person, let alone a natural person, and it did not devise any relevant invention," Justice Kitchin said.
Thaler's case had relied on his argument that DABUS was an inventor, a position that the court held was "flawed and legally impossible."
Justice Kitchin clarified that the appeal was not concerned with the issue of whether an artificial intelligence can invent, but rather whether the patents Thaler applied for on behalf of the AI were admissible.
Thaler has asked courts and intellectual property offices in the U.K., the U.S., Germany and many other jurisdictions to register patents with DABUS listed as the sole inventor.
According to Thaler, the machine devised new inventions, including a food container and a flashing beacon, independently of him.
The court considered three issues, including the "scope and meaning" of the term "inventor" under the 1977 Act and whether it extends to a machine such as DABUS.
Justice Kitchin held that two key sections of the statute "permit only one interpretation: an inventor … must be a natural person, and DABUS is not a person at all." He also points out that there was no suggestion in the law that the term "deviser" meant anything other than a person who devises a new product that is not obvious.
As a result, the U.K.'s Intellectual Property Office was right to conclude that DABUS "is not and never was an inventor" under the Patent Act.
The unanimous panel also ruled that Thaler could not be considered the owner of any invention devised by DABUS and therefore be entitled to apply for a patent.
Justice Kitchin said that claim had no merit because it again relied on the assumption that DABUS could be an inventor in the first place. The justice added that Thaler's reliance in this context on the doctrine of "accession," which states that the owner of the existing property also owns the new property, was misguided.
As a result, the justices held that Thaler had no right to seek the patents himself either.
Finally, the justices also concluded that the patent office had been right to hold that the patent applications were "withdrawn" because they did not fulfill necessary requirements under the part of the law dealing with the right of the inventor to be mentioned in any patent.
Justice Kitchin said that argument again failed based on Thaler's premise that DABUS itself was the inventor.
The justice said that, although it is not the patent office's job to investigate whether a statement from the applicant indicating the right to be granted a patent was correct, this does not mean that the office cannot intervene when the indication is "obviously defective or insufficient."
The top court held therefore that the patent office was right to consider the applications withdrawn after 16 months as Thaler failed to provide a "plausible basis" for his claims that he was entitled to apply for the patents purely because he owned DABUS.
Justice Kitchin, the court's intellectual property expert, who officially retired on Sept. 29 after a tenure of almost five years, also acknowledged how much the AI landscape had changed since Thaler began his campaign to secure the patents. The arguments "raise policy issues about the purpose of a patent system," he said.
"It may be thought that the rapid advances in AI technology in recent times render these questions even more important than they were when these applications were made," he added.
So far, Thaler's campaign has been broadly unsuccessful, with only South Africa's intellectual property offices allowing the artificial intelligence to be named as the patent's inventor. An Australian court initially held that DABUS could be considered an inventor, but the decision was later overturned.
But Wednesday's ruling is the first from a final court of appeal on the issue after the High Court dismissed Thaler's attempts to get the patents registered. The Court of Appeal followed suit.
A spokesperson for the U.K. Intellectual Property Office praised the "clear and unanimous" decision of the top court and the clarification the judgment gives to "the law as it stands in relation to the patenting of creations of Artificial Intelligence machines.
"We recognize, however, that there are legitimate questions as to how the patent system, and indeed intellectual property more broadly, should handle such creations," the spokesperson added.
Ryan Abbott, counsel for Thaler, said, "It is now up to Parliament to change the law to allow AI-generated inventions to be protected and to make the U.K. a favorable jurisdiction for the use and development of AI in research and development.
"Until then, future legal disputes will likely focus on how much and what kinds of contributions from a natural person are required to devise an invention with AI involvement, and this is likely to become increasingly challenging to determine as AI is increasingly adopted across industries and becomes increasingly sophisticated," he added.
Justices George Leggatt, David Kitchin, Patrick Hodge, Nicholas Hamblen and David Richards heard the case for the U.K. Supreme Court.
Thaler is represented by Robert Jehan of William Powell, Ryan Abbott of Brown Neri Smith Khan LLP and Jacob Turner of Fountain Court.
The Comptroller-General of Patents, Designs and Trade Marks is represented by Stuart Baran of Three New Square.
The case is Thaler v. Comptroller-General of Patents, Designs and Trade Marks, case number 2021/0201, in the U.K. Supreme Court.
--Editing by Ed Harris.
Update: This story has been updated with detail from the ruling, background and counsel information. It also adds comment from Thaler's lawyer.
For a reprint of this article, please contact reprints@law360.com.
