Man versus machine―a judge decides

Stephen Thaler v Comptroller General of Patents, Trade Marks and Designs [2021] EWCA Civ 1374 concerned the refusal to grant two patent applications designating an AI machine as the inventor. The applicant, Dr Stephen Thaler, created the AI machine, which had the name DABUS. In the box requiring him to indicate how he had the right to be granted a patent, Dr Thaler wrote ‘by ownership of the creativity machine “DABUS”', and explained further that the inventions ‘Food container’ and ‘Devices and methods for attracting enhanced attention’ were generated by DABUS therefore DABUS should be granted the patent.

However, the form was found not to satisfy the relevant sections of the Patents Act 1977.

The applications were both found to be potentially patentable inventions. That the form stated Dr Thaler was not the inventor was not uncommon, as it arises where a company applies for a patent where the inventor is an employee. Rather, the issue was that s 13(2) of the 1977 Act required Dr Thaler to identify a person as the inventor and indicate how he derived his rights from that person. Dr Thaler re-applied, declaring ‘the invention was entirely and solely conceived by DABUS’.

However, Lord Justice Birss poured cold water on the attempt to make legal history.

Giving the lead judgment, he said: ‘At first sight, and given the way this appeal is presented by both parties, the case appears to be about artificial intelligence and whether AI-based machines can make patentable inventions.

‘In fact this case primarily relates to the correct way to process patent applications through the Patent Office and turns on material which was either buried in the papers but ignored in the written and oral argument, or not referred to at all. It is an object lesson in the risks of advocacy being distracted by glamour.’

He found it was clear and undisputed that Dr Thaler was the owner of DABUS, ‘its creator and was the person who set it up to run to produce the inventions in issue’.