01 October 2021

DABUS Again Denied in the US and the UK, Part II – the Split Decision in the UK


In the first article in this series I looked at the US approach to the role of the inventor in patent law and practice, and at the recent decision of Judge Leonie M Brinkema in the United States District Court for the Eastern District of Virginia (‘EDVA’) upholding the USPTO’s decision to refuse two patent applications on the basis that the ‘AI’ machine DABUS is not a human being and therefore cannot be an inventor under US law (Stephen Thaler v Andrew Hirshfeld and the US Patent and Trademark Office, Mem. Op. [PDF 998kB]).  In this article, I shall turn my attention to the split decision of the Court of Appeal of England and Wales in Thaler v Comptroller General of Patents Trade Marks And Designs [2021] EWCA Civ 1374, in which parallel efforts to name DABUS as an inventor have also been rejected, with Thaler’s appeal being dismissed despite a weighty dissent by Lord Justice Birss.

The issues in the UK case are somewhat different, and more nuanced, than in the US.  While all three judges on the Court of Appeal agreed that an ‘inventor’ under the UK law must be a human being, the fact that DABUS is a machine was not immediately determinative of the outcome.  An inventor is not required to play any active role in the filing, prosecution, or grant of a patent in the UK, so arguably there remains a question as to whether an application can be permitted to proceed even if a legally valid inventor has not been – or cannot be – named.  In the event, the answer to this question turned on whether or not the applicant (i.e. Dr Thaler) could satisfy statutory requirements to name the inventor, and to indicate how he is entitled to be granted patents on inventions that he did not claim to have devised himself.

Lord Justice Arnold and Lord Justice Birss disagreed on the outcome, with the tie being broken by Lady Justice Elisabeth Laing, agreeing with Arnold LJ that the DABUS applications should be deemed withdrawn. 

Arnold LJ is the preeminent patent law specialist on the Court of Appeal.  He was elevated to the Court of Appeal in 2019, after being appointed to the High Court in 2008, and as Judge in Charge of the Patents Court in April 2013.  In March 2016 he was appointed as an External Member of the Enlarged Board of Appeal of the European Patent Office.  Impressive as this is, however, Birss LJ is no lightweight.  In 2010 he was appointed as a Specialist Circuit Judge sitting in what was then the Patents County Court.  In 2013 he was appointed to the High Court, and in 2019 he filled the place formerly held by Arnold LJ as Judge in Charge of the Patents Court, before being elevated to the Court of Appeal in January 2021.

So this is a case in which the dissenting judgment must be taken seriously, especially with the possibility still open of an appeal to the Supreme Court.  But for now, at least, the balance of the law remains against DABUS in the UK.

Machines are not ‘Inventors’

There is one thing on which all UK decision-makers – UKIPO Deputy Director Huw Jones, High Court Justice Marcus Smith, and all three judges in the Court of Appeal – so far agree.  Under the UK Patents Act 1977 an ‘inventor’ can only be a natural person.  I do not intend to review this finding in detail.  The reasoning of Arnold LJ can be found at [116]-[123] and, despite dissenting on the final outcome, Birss LJ reaches the same conclusion on the meaning of ‘inventor’ at [49]-[55].  Laing LJ agrees with both at [102].

On LinkedIn, Professor Abbott – head of the Artificial Inventor Project, which is driving the DABUS test cases – appeared to welcome the dissent of Birss LJ.  However, there is no support anywhere for Abbott’s proposal that AI machines should be recognised as inventors.  Even so, as we shall see, Birss LJ would allow patents to be granted to a person who claims to be in possession of inventions generated by a machine, despite the fact that a human inventor has not been – and, if Dr Thaler’s claims are accepted, cannot be – identified, whereas Arnold LJ and Laing LJ would not.

Inventors, Applicants, and Entitled Persons

The key provisions of the UK Patents Act at issue in the proceedings are sections 7 and 13.  Section 7 deals with entitlements to apply for, and to be granted, a patent.  Subsection 7(1) provides that ‘any person may make an application for a patent’.  There is no restriction.  The person (including a legal person, such as a company) that applies need not be the inventor, nor need they have any right to be the eventual recipient of a granted patent.  There is a presumption, in subsection 7(4), that the applicant is entitled to the grant, but this is rebuttable, and a lack of entitlement on the part of the applicant is not fatal to the application (and, indeed, not necessarily fatal to the resulting patent).

Subsection 7(2) defines exhaustively those persons to whom a patent may validly be granted.  Firstly, under paragraph (a), the inventor is ‘primarily’ entitled to the grant.  Secondly, and most interestingly, paragraph (b) provides that a patent may be granted ‘in preference’ to the inventor, to:

…any person or persons who, by virtue of any enactment or rule of law, or any foreign law or treaty or international convention, or by virtue of an enforceable term of any agreement entered into with the inventor before the making of the invention, was or were at the time of the making of the invention entitled to the whole of the property in it (other than equitable interests) in the United Kingdom

While some of the circumstances envisaged in paragraph 7(2)(b) clearly require the execution of a legal agreement involving the inventor, it also encompasses (for example), ‘any person … who, by virtue of any … rule of law, … was … at the time of the making of the invention entitled to the whole of the property in it…’.

Finally, paragraph 7(2)(c) deals with successors in title of any persons mentioned in paragraphs (a) and (b), which is not relevant to Thaler’s case.

Section 13 deals with the rights of inventors to be ‘mentioned’ in patents granted on their inventions, and the obligations of the applicant to provide statements giving effect to these rights.  In particular, subsection 13(2) requires the applicant to submit a statement that, (a), identifies ‘the person or persons whom he believes to be the inventor’ and, (b), where the applicant is not the inventor, ‘indicating the derivation of his or their right to be granted the patent’.

As we shall see, there are differences of opinion between Birss LJ and Arnold LJ as to the extent to which this requirement is a ‘mere’ formality.  But there is not doubt that it is obligatory, because the consequence of failing to provide the statement within time is that ‘the application shall be taken to be withdrawn’.

This consequence is critical.  It is the basis on which the UKIPO refused to allow Thaler’s applications to proceed, as upheld by the High Court.  A key question on appeal is therefore whether the UKIPO was correct to deem Thaler’s applications withdrawn.

The Dissent of Birss LJ

While it may be a little unusual to start discussion of the judgments with the dissenting opinion, in this case it was Birss LJ who did much of the heavy lifting with regard to the historical development of sections 7 and 13 of the 1977 Act (at [32-47] and [62-69]).  Arnold LJ acknowledges this (at [140]), and Laing LJ observes (at [102] and [105]) that Arnold LJ and Birss LJ are in agreement in many respects, other than their subsequent conclusions.

Based on his historical review, Birss LJ found that the relevant intentions behind changes to the law in the 1977 Act included:

  1. abolishing the ‘artificial meaning’ of ‘true and first inventor’ (which previously could include someone who imported into the realm an invention devised by somebody else), and providing instead that the inventor is the ‘actual deviser’ of the invention;
  2. allowing a patent application to be made by anyone claiming to be entitled to the grant;
  3. abolishing a requirement for the inventor to assent to the making of an application, and instead simply require the applicant to name those believed to be inventors, and include those names in published specifications; and
  4. relieving the Patent Office of the obligation to confirm entitlement of the applicant, instead leaving any arguments over entitlement to be resolved by a separate procedure instigated by a person disputing ownership of a patent.

In the view of Birss LJ, this largely eliminated the role of the UKIPO in evaluating the legitimacy of the applicant’s claims to entitlement.  In particular, he concluded (at [58]) that (emphasis added):

Looking at the words [of subsection 13(2)] themselves, all that is required in relation to inventorship is that the applicant must identify who he believes is the inventor. As a matter of language it would be surprising if this meant that an applicant who, in good faith, said they were unable to identify the inventor would find their application prejudiced. I can see that the Comptroller might ask for an explanation why the applicant was unable to name the person they believed to be the inventor but assuming a coherent explanation was given, I would hold that the language of the section was satisfied.

So, as far as Birss LJ is concerned, Thaler’s insistence on his belief that DABUS is the inventor – so long as that belief is expressed in good faith – is sufficient to satisfy paragraph 13(2)(a), even though this statement, on its face, fails to identify any entity meeting the Act’s definition of an inventor.

As for Thaler’s entitlement to the patents, Birss LJ concluded that since paragraph 13(2)(b) merely requires the applicant to ‘indicat[e] the derivation of his or their right to be granted the patent’, which Thaler had done – presumably in good faith – the requirement is satisfied.  He observed, at [68], that:

The Comptroller is obliged at least to require that the applicant goes as far as stating which limb of s7(2) he relies on but that is all. The fact that an applicant gives further detail does not mean the Comptroller is obliged to examine the cogency of an assertion. 

Ultimately, Thaler’s contention is that there is some ‘rule of law’ whereby his ownership and control of DABUS entitles him to the grant of patents on its invention under paragraph 7(2)(b).  Birss LJ found that it is enough that Thaler asserts that this is the case, and it is not the role of the UKIPO to ratify that assertion.  This also means that it is unnecessary for the court to examine whether the asserted ‘rule of law’ exists (at [83]-[84]).

According to Birss LJ, unless somebody else comes forward claiming a better right of ownership than Thaler, and invokes the provisions of either section 8 (before grant) or section 37 (after grant) to challenge Thaler’s entitlement, the UKIPO is powerless to object.  In reaching this conclusion, he acknowledges that Thaler’s claim is unlikely ever to be tested (at [85]).

To be clear, according to Birss LJ it is completely irrelevant whether DABUS actually generated the inventions claimed in Thaler’s applications, or whether there is actually any rule of law that entitles him to the grant of the patents.  It is also irrelevant that Thaler’s statement that DABUS is the ‘inventor’ is inconsistent with the meaning of the word under the Act, resulting in there being no inventor to be identified or named on the resulting patents.  It is sufficient that Thaler’s statements are submitted in good faith, in which case Birss LJ concludes that the UKIPO is completely powerless to prevent the applications from proceeding. 

If this view of the matter were correct, then it seems to me that it should be of little comfort to Professor Abbott in his efforts to have AI machines recognised as ‘inventors’.  It is a position that is concerned only with Thaler’s actions in satisfying the formal requirements of subsection 13(2), and not with any substantive role of AI within the patent system. 

The Contrary Conclusions of Arnold LJ

While Arnold LJ agreed with Birss LJ on much of the historical background, and the intentions behind the changes to the law brought about by sections 7 and 13 of the 1977 Act, he did not agree that it is sufficient for Thaler to submit statements of inventorship and entitlement based merely on his genuinely held beliefs, or that it is unnecessary to examine whether or not there is a genuine ‘rule of law’ by which Thaler is entitled to be granted patents on inventions allegedly made by DABUS.

Arnold LJ found that ‘[t]he rule of law relied upon by Dr Thaler is the common law doctrine of accession … described in Blackstone's Commentaries on the Laws of England’ (at [130]).  This is, loosely speaking, the ‘fruit of the tree’ rule, whereby the owner of a tree is also automatically the owner of any fruit that it produces.  However, on closer consideration Arnold LJ does not find the doctrine to be applicable to intellectual property (at [131]):

…the instances of the application of this doctrine given by Blackstone all concern new tangible property which is produced by existing tangible property. It is, as Blackstone says, a doctrine derived from Roman law which states that the owner of the pre-existing tangible owns the new tangible. It is rooted, as is most of the law of both personal and real property as theorised by Blackstone, in the concept of "dominion", or exclusive possession. The newly produced tangible is susceptible of exclusive possession….

As Arnold LJ goes on to observe, at [133], intangibles – such as inventions – are ‘non-rivalrous goods’ that are not susceptible of exclusive possession.  This is true even when an intangible is generated by a tangible property.  His conclusion is that (at [137]):

…there is no rule of law that a new intangible produced by existing tangible property is the property of the owner of the tangible property, as Dr Thaler contends, and certainly no rule that the property contemplated by section 7(2)(b) in an invention created by a machine is owned by the owner of the machine. Accordingly, the hearing officer and the judge were correct to hold that Dr Thaler is not entitled to apply for patents in respect of the inventions given the premise that DABUS made the inventions.

Arnold LJ then turned to the question of whether the UKIPO has the power to interrogate the applicant’s statements under section 13, and to deem an application to be withdrawn if those statements are found wanting.  In his view (at [143], and contrary to that of Birss LJ) the claim that DABUS is the inventor, no matter how genuinely made, is ‘a legal impossibility’, and assessing this claim ‘does not involve the Comptroller in determining whether or not the answer given was factually accurate’.

Similarly, in view of his conclusions on the doctrine of accession, Arnold LJ found (at [144]) that Thaler’s assertion of entitlement on the basis that he is the owner of DABUS is incorrect as a matter of law.  Arnold LJ therefore concluded (at [148]), that Thaler’s statements, on their face, fail to meet ‘the statutory requirements that (i) the inventor must be a person and (ii) an applicant who is not the inventor must be able, at least in principle, to found an entitlement to apply for a patent in respect of the invention.’  The requirements of subsection 13(2) are therefore not satisfied, and the applications are deemed to be withdrawn.

The Casting Vote of Laing LJ

While deferring to Arnold LJ and Birss LJ on their researches into the history of the 1977 Act and property law, Laing LJ provides her own brief reasons for agreeing with Arnold LJ that the appeal should be dismissed.  She reasons that ‘modern patent law is almost entirely a creature of statute’ and ‘[t]he 1977 Act, therefore, provides the answers to the questions on this appeal’ (at [100]).  This means that there can be no right to apply for a patent other than as provided by section 7.  As Laing LJ puts it (at [102]-[103]):

A patent is a statutory right and it can only be granted to a person. That means that the effect of section 7(2)(a) is that the inventor must be a person. Only a person can make, before the invention is made, an enforceable agreement by which he is entitled to the whole of the property in the invention (other than equitable interests) (section 7(2)(b)). Such an agreement can only be made with another person. Only a person can have a successor in title (section 7(2)(c)). It follows that, absent a statutory deeming provision, it is simply not possible, as a matter of law, for Dabus to be an 'inventor' for the purposes of section 7. Nor, for the reasons given by Arnold LJ, has Dr Thaler identified any enactment of rule of law by which he is entitled to that property ….

The 1977 Act is a 'complete code' …. Section 7 is the only provision of the 1977 Act which confers a right to apply for a patent. On its proper construction, it does not permit the grant of a patent in a case in which the inventor is not a person. There is no room for any implication to the contrary. In other words, if the inventor is known not to be a person, section 7 does not and cannot apply to the case at all. If the inventor is not a person, but a machine, no person has, as a matter of law, a right to apply for a patent in respect of the machine's inventions. It is as simple as that.

As for section 13, Laing LJ accepts (at [105]) that ‘section 13(2) is designed to ensure that bona fide mistakes in identifying the inventor, or about the derivation of the applicant's right to apply for a patent, will not prevent the grant of a patent, or lead to its revocation’, however:

There is a significant difference between a failure to identify the person who is the inventor, and the statement made by Dr Thaler. In my judgment, such a statement self-evidently does not comply with section 13(2)(a), for two linked reasons. First, it is a statement which fails to identify any relevant 'person' who, the applicant believes, is the inventor, and instead, positively asserts that there is no such person. Second, it shows that, as a matter of law, the applicant is not entitled, under section 7, to apply for a patent, both because the inventor is positively asserted not to be a person and because, it follows, the inventor can have no property in the invention which could belong to the applicant, or which could have become his property in accordance with section 7(2)(c).

Conclusion – Next Stop, the Supreme Court?

While Thaler’s appeal may have failed, the outcome is less clear-cut than it might have been.  Two eminent patent law specialists, in Arnold LJ and Birss LJ, reached different conclusions.  The third judge, Laing LJ, arrived at the same result as Arnold LJ, but by different reasoning.  For her, section 7 of the UK Patents Act 1977 simply could not apply where the inventor is not a natural person, whereas Arnold LJ appeared open to the possibility that paragraph 7(1)(b) might be applicable, were it not for the fact that there is no ‘rule of law’ (such as the common law doctrine of accession) that would enable Thaler to claim entitlement to patents for inventions generated by DABUS.

Given these differences in the Court of Appeal, it seems entirely possible that the matter will find its way to the UK Supreme Court.  Thaler will need to apply for permission to appeal – in the first instance to the Court of Appeal or (in the case of refusal there) to the Supreme Court itself.  It is very likely that any Supreme Court panel would include Lord Kitchin, who was the first specialist IP judge to be appointed to the Court, in 2018, having been a senior judge of the Patents Court from 2007, and having served on the Enlarged Board of Appeal of the European Patent Office between 2009 and 2011, before being appointed Lord Justice of Appeal.  Notably, Lord Kitchin gave a keynote speech [PDF, 162kB] at the WIPO ‘AI: Decoding IP’ conference in June 2019, in which he quoted from Professor Abbott’s publications and touched on questions relevant to AI and inventorship.

DABUS may not yet be done in the UK.  As for what all this might mean for Australia, I will look at that in the third part of this series of articles.


Post a Comment

Copyright © 2014
Creative Commons License
The Patentology Blog by Dr Mark A Summerfield is licensed under a Creative Commons Attribution-NonCommercial-ShareAlike 3.0 Australia License.