THE UK SUPREME COURT HAS CONSIDERED THE QUESTION AS TO WHETHER A MACHNE OR 'ARTIFICIAL INTELLIGENCE' (AI) CAN BE CONSIDERED AN INVENTOR FOR THE PURPOSES OF THE PATENTS ACT 1977 ('the Act').
For the avoidance of doubt, this case was brought by a Dr Thaler (a human) on behalf of his AI 'DABUS'. This was not a case instituted by ChatGPT or another form of AI generating court forms and demanding equal rights.
SUMMARY
The answer to this deeply philosophical question is most clearly and concisely put by Lord Kitchin quoting Elisabeth Laing LJ:
"Whether or not thinking machines were capable of devising inventions in 1977, it is clear to me 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." [Para. 103]
In clarifying their reasoning, their Lordships held that:
An 'inventor' within the meaning of the Patents Act 1977 must be a natural person.
There was, as such, no 'inventor' through whom Dr Thaler could claim any right to obtain a patent and the fact that Dr Thaler was DABUS' owner did not assist him.
The Hearing Officer for the comptroller was entitled to hold that Dr Thaler's patent applications were taken to be withdrawn for failure to satisfy the relevant provisions of the Act.
BACKGROUND
Dr Thaler was/is the owner of DABUS i.e. 'Device for the Autonomous Bootstrapping of Unified Sentience' an AI system. He applied to register 2 patents; one relating to food beverage container, the other a new light beacon to attract the attention of the emergency services. When doing so, he stated that both had been generated by DABUS.
The Hearing Officer for the Comptroller-General of Patents determined the applications as withdrawn. Specifically, the machine did not qualify as an inventor within the meaning of s.7 of the Act and in any event, it was Dr Thaler's own case that he was not in fact the inventor. DABUS was and furthermore, is; a machine acting autonomously. To be clear, Dr Thaler's case was that he acquired the right to the grant of patents by virtue of his ownership of the machine.
There is nothing to stop a non-inventor from applying for a patent. However, there should be a clear chain of events as to how they acquired the right e.g. by succession or more commonly, through an employment contract i.e. 'my servant made it so I own his work.' While Dr Thaler's argument that he owned the machine may be said to have parallels with this later argument, the Comptroller determined through a series of hearings that this explanation did not satisfy the requirements under s.7 and s.13 of the Act. The simple reason being, DABUS was and is not, a natural person (i.e. human).
Consequently, Dr Thaler first made an appeal to the High Court of England & Wales where Marcus Smith J subsequently made a finding that 'a machine could not be an inventor' within the meaning of s.13 of the Act. The appeal was dismissed accordingly however; Dr Thaler thereafter applied to to the Court of Appeal which by a majority, upheld the judgement of Marcus Smith J with 1 dissent from Birss LJ. He considered that while the Comptroller was right to request whom the inventor was, Dr Thaler had identified this (DABUS) and should be granted the patent accordingly. Ultimately, the dispute found its way to the United Kingdom Supreme Court to determine whether Dr Thaler should be granted the patents invented by DABUS?
THE JUDGEMENT
While the decision that a machine cannot be an 'Inventor' within the meaning of an Act passed in 1977 should come as a surprise to absolutely nobody; what was of interest was why Dr Thaler could not establish ownership of the right by virtue of his ownership of DABUS.
Pursuant to s.7 of the Act and as stated above, the applicant for a patent is not required to be the inventor. However, should they not be the inventor, they must fall within 2 exhaustive categories i.e.
Owning an entitlement deriving from law. OR;
An agreement with the inventor OR successors in title.
Regretfully, Dr Thaler did not fall into either category and so he put his argument under the Doctrine of Accession i.e. the owner of existing property owns by extension, property produced by the existing property. The example he used was that if he owned a mother cow, he would be the owner of the calf produced by the mother cow.
At first sight, the Doctrine of Accession would seem to fit Dr Thaler's case hand-in-glove but their Lordships dismissed the suggestion describing it as 'misguided'. Turning to the specific paragraphs of the Judgement:
In particular, Dr Thaler’s reliance on the doctrine of accession in this context is misguided. The doctrine concerns new tangible property produced by existing tangible property. Dr Thaler contends that, upon the application of this doctrine, the owner of the existing property also owns the new property. In this way, the farmer owns the cow and the calf. By analogy, Dr Thaler continues, he, as owner of DABUS, is the owner of all rights in all developments made by DABUS. [Para.87].
We are not concerned here with a new item of tangible property produced by an existing item of tangible property, however. We are concerned with what appear (and which for present purposes we must assume) to be concepts for new and non-obvious devices and methods, and descriptions of ways to put them to into practice, all of which, so Dr Thaler maintains, have been generated autonomously by DABUS. There is no principled basis for applying the doctrine of accession in these circumstances. [Para. 88].
For these reasons and those given by the Court of Appeal, I am satisfied that the doctrine upon which Dr Thaler relies here, that of accession, does not, as a matter of law, operate to confer on him the property in or the right to apply for and obtain a patent for any technical development made by DABUS. [Para. 89].
Ultimately, the UKSC determined that the Act would need to be amended for Dr Thaler's case to succeed.
COMMENT
With respect to their Lordships, an AI is a form of intellectual property which in this case has produced further forms of intellectual property i.e. plans for inventions. It is not dissimilar to how a cow being tangible property can produce a calf, another form of tangible property.
As there Lordships correctly identified, there is no credible dispute that the natural owner of the calf is the owner of the mother cow that gave birth to the calf. However, this is not just because the Doctrine of Accession has long since enshrined it in law, but because its obvious to absolutely everyone whom understand what a cow is, what a calf is and how the cow produces the calf.
While it is probable that Parliament did not in 1977 envision near-sentient machines when it considered the meaning of an 'inventor' for the purposes of patents, insofar as the Doctrine of Accession is concerned; we suspect near-future generations will see this as a judgement stemming from donkeys rather than cows.
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