UK Court Of Appeal Rejects AI Inventor Claim

• Published date: 24 September 2021
• Subject Matter: Intellectual Property, Litigation, Mediation & Arbitration, Patent, Trials & Appeals & Compensation
• Law Firm: HGF Ltd
• Author: Dr. Andrew McGettrick

In a Judgment handed down on 21 September 2021 ([2021] EWCA Civ 1374), the Court of Appeal has rejected an appeal by Dr. Stephen Thaler claiming that it should have been possible for him to name an Artificial Intelligence (AI) entity as the inventor on his UK patent applications. This judgment perhaps makes more emphatic the need for a change in UK legislation to keep pace with the increasing prevalence of AI, particularly if inventions created by AI entities are to be protectable. However, as there was a dissenting judgment at the Court of Appeal, with Lord Justice Birss coming to a different finding to that of Lord Justice Arnold and Lady Justice Elisabeth Laing, it is likely that permission to appeal to the UK Supreme Court will be sought.

This Court of Appeal decision follows previous judgments by Mr. Justice Smith at the High Court and the UK Intellectual Property Office (UK IPO) which came to similar conclusions. Parallel cases have been contested by Dr. Thaler across different jurisdictions. Corresponding patent applications were refused by the European Patent Office, with those decisions now under appeal. Patent applications were also refused by the US PTO, with a later judgment by a US District Court in Virginia upholding the decision of the US PTO. Conversely, in a parallel case in Australia, Justice Beach of the Federal Court of Australia determined that an AI machine can be named as an inventor on a patent application, albeit this decision can be appealed by the Australian Patent Office. In addition, a corresponding patent application naming an AI entity as inventor has been granted in South Africa.

The High Court judgment under appeal in the UK had concluded that it was correct for Dr. Thaler's UK patent applications, which named an AI entity (DABUS) as the sole inventor and Dr. Thaler as the applicant, to be deemed withdrawn by the UK IPO on the basis that an inventor must be a natural person (which DABUS is not) and that, in any event, DABUS lacks a legal personality and so would be incapable of holding property (such as the right to file patent applications) or transfer such property to Dr. Thaler as applicant. The majority opinion in the Court of Appeal judgment upholds this position.

The reasoning provided by Lord Justice Arnold and Lady Justice Elisabeth Laing in their majority opinion in the Court of Appeal judgment was as follows. Section 13(2) of the UK Patents Act 1977 (with reference to the judgement in Nippon Piston Ring Co. Ltd's...