In a landmark judgment the Supreme Court of United Kingdom has paved a way for deeper deliberation into the legal position of artificial intelligence (“AI”) especially in the subject of intellectual property rights, holding that AI is not a natural person capable of being an inventor.
Dr. Stephen Thaler (the “Appellant”) filed two applications for a grant of patent to the UK Intellectual Property Office (“UKIPO”) on concepts of new and non-obvious devices devised by DABUS, an AI machine. According to the Appellant, the inventions were autonomously devised by DABUS, and he had filed for grant of patent in the capacity of the owner of DABUS. Both these applications were considered withdrawn by the Comptroller General of Patents, Designs and Trademarks (the “Comptroller”) as they did not comply with sections 7 and 13 of the Patents Act of 1977 (the “Act”). The Court of Appeal dismissed the appeal filed by the Appellant by a 2:1 majority. Delivering the dissenting judgment in the appeal, Birss LJ agreed that DABUS is not a person; however, he held that as per requirements of the Act, the fact that the creator of these inventions is a machine, did not impede the grant of a patent. The Appellant has the right to apply for a patent as he derives this right by being an owner of the machine.
KEY LEGAL CONSIDERATIONS
The scope and meaning of ‘inventor’ in the Act.
As the owner of any technical advance made by the AI, whether the Appellant is entitled to apply for and obtain a patent.
The judgement was delivered by Lord Kitchen on behalf of the bench. Lord Kitchen, while deciding the matter, considered the opinion of Birss LJ. However, it led him to a different conclusion in favour of the Comptroller, which was further appealed to the Supreme Court, pleading for a grant of patent for inventions of DABUS.
On the first issue, Lord Kitchen decided on whether DABUS is an ‘inventor’ as per the Act. The judgement rules this issue in favour of the Comptroller, after interpreting section 7 and section 13 of the Act. Section 7 of the Act confers the right to apply for and obtain a patent and it provides a complete code for that purpose. Section 13 of the Act addresses the right of the inventor to be mentioned as inventor in any patent granted for that invention and imposes an obligation on an applicant for a patent under the Act to provide certain information to the UKIPO. It was concluded that in the context of the Act as a whole, an inventor must be a natural person. DABUS is a machine and not a person and, therefore, it is not and never was an ‘inventor’ for section 7 or 13 of the Act. “In all these circumstances the Comptroller was right to decide that DABUS is not and was not an inventor of any new product or process described in the patent applications. It is not a person, let alone a natural person and it did not devise any relevant invention. Accordingly, it is not and never was an “inventor” for the purposes of section 7 or 13 of the 1977 Act.”
The second issue is whether the Appellant was entitled to apply for the grant of a patent as the owner of DABUS. The Appellant contended that he is entitled to file an application and obtain the grant of a patent based on his ownership of DABUS. The court rejected this argument; firstly, on the fact that DABUS is not and has never been an inventor. Secondly, according to section 7(2) of the Act, the applicant must be a person entitled to the whole of the property or the applicant must be the successor in title to the inventor and the Appellant does not satisfy any part of this section. The Act does not confer rights purely based on ownership.
Further, the court observed that the Appellant’s submission based on the doctrine of accession is misguided as the doctrine concerns a new tangible property produced by an existing tangible property. However, the present applications are concerned with what the court assumes to be concepts for new and non-obvious devices and methods and, therefore, the doctrine of accession cannot be applied in such circumstances.
“The Comptroller has emphasised, correctly in my view, that this appeal is not concerned with the broader question whether technical advances generated by machines acting autonomously and powered by AI should be patentable. Nor is it concerned with the question whether the meaning of the term “inventor” ought to be expanded, so far as necessary, to include machines powered by AI which generate new and non-obvious products and processes which may be thought to offer benefits over products and processes which are already known.”
The court narrowed down and restricted the broader issues that arose because of this case; and evaluated the technicalities of the larger issue at hand- “Whether or not thinking machines were capable of devising inventions in 1977, it is clear to me that that Parliament did not have them in mind when enacting this scheme. If patents are to be granted in respect of inventions made by machines, the 1977 Act will have to be amended.”
The court maintained the position that the appeal is not concerned with the broader question of whether AI-generated technical advances are patentable or not. Rather than diverging, the attention was focussed on the merits of the appeal and. specifically directing scrutiny towards the accurate interpretation and subsequent application of pertinent provisions within the Act to the Appellant’s submission. The courts acknowledged that the technical nature of the provisions of the Act have been drafted for a time and place that was prior to the advent of AI; thus, nudging the legislators to consider the advancements and make changes to the law to accommodate such new age developments.
This judgment also provides guidance in relation to the treatment of AI-related patent applications in the Indian context. It is pertinent to note the parallels between section 7 of the Act and section 6 of the (Indian) Patents Act, 1970, which sets out the requirements for persons entitled to apply for patents. Similarly, section 13 of the Act aligns with section 28 of the Patents Act, 1970 that sets out the criteria for the mentioning of the name of the applicant as the inventor of the relevant patent in India. India is at the centre of several AI and related technological advancements and the judgment may be relied in assessing the nature of similar applications in India going forward.
Significantly, the judgment has opened avenues for a dialogue to discuss legal issues concerning the rights of AI and their owners. Given the ubiquitous developments in the field of AI, this judgment provides guidance for future court decisions in India and around the globe.
Click here to read the judgement.
 Paragraph 7, Thaler v. Comptroller- General of Patents, Designs and Trade Marks  UKSC 49.
 Paragraph 48, Thaler v. Comptroller- General of Patents, Designs and Trade Marks  UKSC 49.
 Paragraph 79, Thaler v. Comptroller- General of Patents, Designs and Trade Marks  UKSC 49.
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