DABUS Defeated Again—But Judges Divided

The 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that two patent applications designating an artificial intelligence called DABUS as the inventor were deemed to be withdrawn.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2019, the UK IPO found that DABUS was not a person envisaged by the Patents Act, and the patents should be deemed to be withdrawn.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and, if he fails to do so, the application shall be taken to be withdrawn.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.

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