Worldwide: DABUS Case: UK Supreme Court Rejects Appeal By Dr. Thaler And Confirms That An Artificial Intelligence Product Cannot Be Named Inventor Under The UK Patents Act 1977

The decision (available here) is the final chapter of legal proceedings which arose after Dr. Stephen Thaler, creator and owner of the artificial intelligence product named "DABUS", filed two UK patent application at the UK Intellectual Property Office, naming DABUS as the sole inventor of both.

The two applications were rejected by the UKIPO in 2019 (decision available here), holding that Dr. Thaler had failed to comply with Section 13(2) of the UK Patents Act 1977, which requires the patent applicant to identify (a) "the person whom he believes to be the inventor"; and (b) the "derivation of his right to be granted the patent".

The decision of the UKIPO was later confirmed by the High Court of England and Wales (Marcus Smith J – available here) and by the Court of Appeal (Richard Arnold LJ and Elisabeth Laing LJ, with dissenting opinion by Colin Birss LJ – available here).

Dismissing the appeal by Dr. Thaler, the UK Supreme Court confirmed the lower courts' rulings, concluding that an inventor under the UK Patents Act 1977 must be a "natural person" and therefore DABUS – a software program – cannot be named inventor in a UK patent application (cf. §§ 54-73).

Additionally and importantly, regardless of the above insurmountable obstacle to the possibility for a software program to be indicated as the named inventor in a patent application, the Court also clarified that there would be no legal doctrine under which Dr. Thaler could derive from DABUS any rights on the patent applications filed. In doing so, the Court rejected Dr. Thaler's request to apply the doctrine of accession, which the Court stated only operates in relation to tangible properties (cf. §§ 74-90).

This decision, which was largely anticipated, substantially confirms the approach which was taken in all other major jurisdictions where Dr. Thaler and his team have run similar test cases (including at the USPTO and EPO – the only exception being South Africa, where Dr. Thaler obtained registration).

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