The High Court of England and Wales has dismissed Dr Thaler's appeal from the decision of the UK Intellectual Property Office (UKIPO) that his patent application was deemed withdrawn because it failed to meet statutory requirements, specifically regarding naming a human inventor. The Court found that Dr Thaler's original claims that the AI system DABUS was the sole inventor rendered his application non-compliant, and his later attempt to name himself as inventor was "obviously defective" based on his own prior statements (Thaler v Comptroller of Patents, United Kingdom Intellectual Property Office).
Background to the case
Dr Thaler has made applications worldwide for patent protection for inventions he cited as made by an AI machine "DABUS", none of which were ultimately successful. His application to the UKIPO on 17 October 2018 for a food or beverage container and 7 November 2018 for a light beacon for emergencies both identified AI system "DABUS" as the inventor in the required Form 7 statement of inventorship. At that time, Dr Thaler had contended that he had a right to be granted a patent for these inventions by virtue of the fact that he owned the AI system, which had "entirely and solely conceived" the inventions. Following appeals all the way to the Supreme Court, it was confirmed by that court in December 2023 that DABUS could not be an inventor within the meaning of s.7 and s.13(2) of the Patents Act 1977 as it was not a person. As such, both patent applications were "taken to be withdrawn".
In its judgment, the Supreme Court noted that, had the teaching provided to the machine been given to a person, and a person had similarly independently conceived of the invention and ascertained its novelty, the person would meet the inventorship criteria. The Supreme Court went on to state that:
"In some cases of machine invention, a natural person might qualify as an inventor by virtue of having exhibited inventive skill in developing a program to solve a particular problem, or by skilfully selecting data to provide to a machine, or by identifying the output of a machine as inventive."
However, the Supreme Court held that DABUS did not meet any of these criteria per the facts stated by Dr Thaler in his Form 7 statement. Lord Kitchin stated that, had Dr Thaler asserted instead that "he was the inventor and used DABUS as a highly sophisticated tool...the outcome of these proceedings might well have been different."
See our IP blog post on the SC's decision in December 2024 here.
The original application
The current appeal related to Dr Thaler's filing of application number GB2206827.4 as a divisional application from the parent application on 10 May 2022, which was accompanied by a Form 7 stating that "the applicant identifies no person or persons whom he believes to be an inventor". The examiner of the application at the UKIPO objected to this Form 7 as it was again not considered to comply with s.13(2). On 8 July 2022, Dr Thaler submitted an amended Form 7 instead claiming to be entitled to the patent through s.7(2)(c) alongside a letter stating he did not believe he was the inventor in accordance with the requirements of the Act. Two days after the aforementioned Supreme Court judgment, Dr Thaler filed another Form 7 in respect of this divisional application on 22 December 2023. This Form 7 listed Dr Thaler as the inventor. It also contained an addendum, stating that:
"Dr Thaler owns DABUS, built DABUS, trained DABUS and used DABUS. Dr Thaler nevertheless submits he is not an inventor under traditional criteria, because in the case of the present invention, the machine only received training in general knowledge in the field and proceeded to independently conceive of the invention and to identify it as novel and salient. If the training Dr Thaler provided DABUS had been given to a person, that person would meet the inventorship criteria as inventor. In the present case, DABUS was not created to solve any particular problem, was not trained on any special data relevant to the present invention, and the machine, rather than a person identified the novelty and salience of the present invention."
The examiner again objected to this new Form 7 as it still did not meet the requirements under s.13(2) and moreover had not been completed within the time limits required.
A hearing was held before Mr Bushel (a Hearing Officer), in which it was decided that Dr Thaler's patent application was not made on time to benefit from divisional status and moreover that the third Form 7 submission did not meet the requirements of s.13(2). As such, the patent application was deemed withdrawn. Dr Thaler then appealed to the High Court.
Decision of the High Court on the appeal
The two main issues engaged with in the appeal were those relating to the deadline for the divisional application and the application of the s.13(2) requirements. On the first point, Michael Tappin KC, sitting as a Deputy judge, held that the deadline had been missed and no exceptions could operate on the facts.
On the s.13(2) requirements, Dr Thaler explained his change of position on the statement of inventorship resulted from how his understanding of how the law had changed as a result of the Supreme Court judgment rather than a change of belief as to the facts. However, the judge did not consider this to be a "logical" change of belief.
The judge found that Dr Thaler's statements "clearly identify DABUS and not Dr Thaler as the "actual deviser" of the inventions. DABUS is said to have conceived of the inventions autonomously and independently. It is emphasised that DABUS was not created to solve any particular problem, nor trained on any special data relevant to the inventions. Further (if it matters) it was DABUS that recognised what it produced as being an invention. Moreover, it is said that Dr Thaler recognises that he is not an inventor on traditional criteria, which can only mean that his contribution was not such as would qualify him as a co-inventor."
Micheal Tappin KC, Deputy Judge continued:
"Therefore, in my judgment it is apparent from the statements accompanying Dr Thaler's third Form 7 that his statement of belief that he is the inventor of these inventions is "obviously defective"."
Dr Thaler's assertion in the new Form 7 that he was the inventor was rendered "obviously defective" due to his previous claims that the AI system DABUS was the sole inventor indicating that he did not believe any person was the inventor.
Of particular interest is the penultimate paragraph of Tappin KC's judgment in which he stated:
"Dr Thaler said that he should not be treated less favourably because he had opted for transparency as to the circumstances of the making of the inventions. He said that an applicant who had named themselves as inventor without disclosing the fact that the invention was generated by AI would have faced no objection from the UKIPO. That is no doubt correct – and indeed that is what Dr Baran confirmed in response to the question from Lord Kitchin quoted in paragraph 26 above (I should add that Prof. Abbott, rightly in my view, did not press the suggestion that Dr Baran was saying that any Form 7 which Dr Thaler submitted naming him as inventor would be accepted, or that the Comptroller was somehow estopped from acting otherwise). It may be that consideration should be given to whether provision needs to be made requiring an AI-generated invention to be identified as such (as the USPTO has done). But that is not a matter for me. Nor should I be swayed by the fact that it is Dr Thaler's voluntary statements to the UKIPO which have led to his Form 7 failing to comply with the requirements of s.13(2)."
The High Court upheld the UKIPO's decision that his patent application was deemed withdrawn because it failed to meet statutory requirements relating to naming a human inventor under s.13(2). An AI inventor cannot, on its own, be considered an inventor as required under statute for the patenting of an invention and moreover disclosing as such can be detrimental to an application for a patent.
The content of this article is intended to provide a general guide to the subject matter. Specialist advice should be sought about your specific circumstances.
