Court of Appeal divided on patent office treatment of AI applications

The Court of Appeal has confirmed that the class of inventions created by AI machines is not patentable in a majority decision with a dissenting opinion provided by Birss LJ. All three Lord/Lady Justices agreed that AI machines were not entitled to be named as inventors. In a majority decision Arnold LJ and Laing LJ ruled that this meant an owner of an AI machine was not entitled to apply for a patent to an invention invented by an AI machine. In a dissenting decision, Birss LJ argued that it was not the role of the Comptroller to rule on entitlement to an application and that such applications should proceed with no named inventor.

The applicant had previously appealed a decision of the UK Intellectual Property Office (IPO) to deem two UK patent applications that named an AI machine, DABUS, as an inventor withdrawn. The High Court had upheld the IPO’s decision. The applicant appealed further to the Court of Appeal arguing that the AI machine DABUS was entitled to be named as an inventor and they were entitled to apply for a patent by virtue of their ownership of the machine DABUS.

The facts of the decision

The decision concerns two UK patent applications (GB1816909.4 and GB1818161.0) filed in the name of a human applicant.

The applicant filed statements of inventorship for both applications. The statements of inventorship explained that the inventor is an AI machine called DABUS and that the applicant derived the right to grant of the patents by “ownership of the creativity machine DABUS”.

The UKIPO wrote to the applicant saying that the naming of a machine as inventor does not meet the requirements and that a person must be identified. The UKIPO asked the applicant to provide a statement indicating how he derived the right to grant of the patent from the inventor and explained that failure to provide the necessary information within the prescribed period would result in the applications being taken to be withdrawn.

The applicant maintained that the statement of inventorship fully met the requirements and requested a hearing. In the hearing the UK IPO found that DABUS was not a person and so cannot be considered an inventor of a patent and that even if DABUS is an inventor there was no valid chain of title from DABUS to the human applicant, even though the human applicant is the owner of DABUS.

The applicant appealed the decision of the UK IPO to the High Court and the appeal was heard by Justice Marcus Smith. The High Court confirmed the decision of the UKIPO.

The applicant then appealed to the Court of Appeal and the appeal was head by Lord Justice Arnold, Lady Justice Elisabeth Laing and Lord Justice Birss.

The full Court of Appeal decision is available at https://www.bailii.org/ew/cases/EWCA/Civ/2021/1374.html

Legal arguments

The decision of the Court of Appeal considers two separate issues:

1. Whether DABUS has the right to be named as inventor.
2. Whether deeming the applications withdraw was the correct response to the information the applicant provided on the statement of inventor form.

With regard to (1) all three Lord Justices were in agreement that only a person can be an inventor and that therefore DABUS was not an inventor within the meaning of the Act.

However, in relation to point (2) Birss LJ disagreed with Arnold LJ and Laing LJ.

Section 13(2) of the Act reads:

13(2) Unless he has already given the Patent Office the information hereinafter mentioned, an applicant for a patent shall within the prescribed period file with the Patent Office a statement –

(a) identifying the person or persons whom he believes to be the inventor or inventors; and

(b) where the applicant is not the sole inventor or the applicants are not the joint inventors, indicating the derivation of his or their right to be granted the patent; and, if he fails to do so, the application shall be taken to be withdrawn.

Both Arnold LJ and Birss LJ agreed that Section 13(2) did not enable the Comptroller to investigate, let alone ratify, the factual correctness of the answers given by the applicant in their application forms and both referenced Nippon Piston Ring Co.’s Application [1987] RPC 120. However, they disagreed on the interpretation of ratifying the factual correctness.

Arnold LJ discussed how the applicant had put forward that they were entitled to the property in the patent application by virtue of common law doctrine of accession concerning new tangible property which is produced by existing tangible property and which states that the owner of the pre-existing tangible owns the new tangible. Arnold LJ disagreed with the idea that the doctrine of accession applied to new intangible property produced by existing tangible property and the applicant’s representative was unable to cite authority in which the doctrine of accession had been applied to a new intangible produced by existing tangible property. It was also conceded that there were instances where the doctrine of accession clearly did not apply to a new intangible produced by existing tangible property e.g., a digital photograph taken by A using B’s camera. Thus, Arnold LJ concluded the applicant was not entitled to apply for patents given the premise that DABUS made the inventions and the applicant owned DABUS.

In terms of whether the requirements of Section 13(2) had been met, Arnold LJ argued that the applicant had not identified “the person or persons whom he believes to be the inventor or inventors” as he had deliberately identified a non-person. Arnold LJ noted that the Comptroller had not determined whether or not the answer given was factually accurate and instead had taken the answer at face value. Arnold LJ thus concluded the requirements under Section 13(2)(a) had not been met.

In addition, Arnold LJ argued that the applicant had not identified “the derivation of this right …to be granted the patent” since his assertion that it was sufficient that he owned DABUS as a matter of law was incorrect. Arnold LJ again noted that again this did not involve the Comptroller determining whether the answer given was factually accurate and takes the answer at face value. Thus, Arnold LJ concluded that the requirements under Section 13(2)(b) had not been met.

Arnold LJ stated that while Nippon Piston confirms it is not the Comptroller’s function to examine statements of inventorship and entitlement, the requirements under 13(2)(b) cannot be ignored and if it is not complied with the application is deemed withdrawn. Arnold LJ stated “the Comptroller’s function under section 13(2) is to check whether the prescribed statement has been filed in time, and if so whether the statements filed appear to comply with the statutory requirements or are defective on their face”.

Arnold LJ then stated that since the applicant had not provided a statement that complied with Section 13(2)(a) or Section 13(2)(b) on their face, the application should be deemed withdrawn.

Laing LJ broadly agreed with Arnold LJ arguing that “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.” Laing LJ considered that the applicant had “explicitly declared in his Forms 7 that he has, no statutory right to the grant of a patent” and that “the Comptroller is not obliged to accept a section 13 statement which is bad on its face”.

Birss LJ disagreed and argued that “just because all inventors are people, this case demonstrates that it does not follow that all inventions have a person that invented them”. Birss LJ therefore considers that the applicant had complied with his legal obligation in providing an honest statement of his belief that there was no human inventor and had met the requirements of Section 13(2)(a) to identify the person or persons believed to be the inventor or inventors.

In relation to entitlement, Birss LJ argued that the purpose of Section 13(2)(b) was “to give the Comptroller information which will be made public”. Birss LJ argued that the applicant had compiled with his legal obligation to provide this information since the assertion provided by the applicant was, if correct, not incomplete and it was not necessary to establish if it was correct. In this regard Birss LJ noted that it was not obvious there was another person with a better right than the applicant to be granted the patents. Birss LJ also stated that if such a person existed, they would be able to come to the Comptroller in proceedings under Section 8 to argue they should be granted the patent instead.

Birss LJ thus contented that the applicant had met the requirements of Section 13 and that the applications should not be deemed withdrawn.

Comments

In the introductory section Birss LJ commented that at first sight the case appears to be about artificial intelligence and whether AI-based machines can make patentable inventions but in fact this case primarily relates to the correct way to process patent applications through the Patent Office.

This provides a reasonable summary of the issues considered. While the previous High Court ruling considered the implications of an AI machine as an inventor, the decisions on this case focus primarily on what information is required under Section 13 of the act and what degree of analysis the Comptroller should perform on this information.

While Dr Thaler could be considered to have had a partial victory in the dissenting opinion of Birss LJ, it was previously hinted in the High Court ruling that if Dr Thaler had simply wanted to obtain a patent, he could have done this by naming himself as inventor. While this issue is not discussed in as much detail in the Court of Appeal judgement, this idea seems to remain standing. Although Birss LJ has proposed the applications should not be deemed withdrawn, he has not provided a mechanism by which DABUS can be named as inventor. Therefore, it is unclear whether the opinion of Birss LJ is as conducive to Dr Thaler’s aims as it first appears. Would further prosecution of a patent application with no named inventor satisfy Thaler’s aims of having recognition for AI machines as inventors?

What this decision has highlighted is that obtaining patent protection in the case of inventions created by AI machines is not straightforward. Circumstances may arise where the inventive concept of the patent is something that an AI system has developed itself relying on knowledge acquired through machine learning, as opposed to classic human “invention”. In such a scenario, applicants will have to identify a human inventor, even though that is an artificial attribution as the human is not the “actual devisor” of the invention.

The UK Government has announced an intention to consult further on possibly policy options for protecting inventions generated by AI systems later this year. Perhaps there is a simple fix, borrowing from copyright law, which designates the author of a computer-generated work “the person by whom the arrangements necessary for the creation of the work are undertaken”.

In the meantime, could this decision be used to argue that the class of AI generated patents where a human could not reasonably claim to have devised the inventive concept, but is named as inventor anyway, are open to challenge on the basis that there is no “inventor”, and no legal mechanism to assert ownership?