The United Kingdom Supreme Court holds an inventor must be a natural person and owning the machine confers no right to a patent

2023-12-20UK

Thaler v Comptroller-General of Patents, Designs and Trade Marks [2023] UKSC 49 (20 December 2023) (Lord Kitchin, with whom Lord Hodge, Lord Hamblen, Lord Leggatt and Lord Richards agreed), dismissing the appeal from the Court of Appeal, UKSC 2021/0201

Dr Stephen Thaler filed two applications under the Patents Act 1977, GB1816909.4 for a food or beverage container and GB1818161.0 for an emergency light beacon, stated that the inventor was DABUS, a machine he owns, and claimed the right to a patent from owning the machine. He does not claim to be the inventor and has never argued that he used DABUS as a sophisticated tool. The Hearing Officer treated the applications as withdrawn under section 13(2), and the High Court and the Court of Appeal dismissed his appeals. The Supreme Court, Lord Kitchin writing for a unanimous court, dismissed the appeal on three issues. First, "an inventor within the meaning of the 1977 Act must be a natural person," the actual deviser being the person who came up with the inventive concept, and "DABUS is a machine and not a person." Second, ownership of DABUS gave Dr Thaler no right to apply: the doctrine of accession concerns new tangible property produced by existing tangible property and has no principled application to inventions. Third, the Hearing Officer was entitled to hold the applications withdrawn because the statement of inventorship named no person and gave no tenable basis for derivation of title. The court said it was not concerned with the broader question whether technical advances generated by machines acting autonomously should be patentable.

What it changesWith the Federal Circuit's Thaler v. Vidal, the Supreme Court of the United States' refusal to hear it in April, and now this judgment, the major common-law patent systems agree that a machine cannot be an inventor and that owning the machine is not a route to a patent. Both courts also said the same thing about what they did not decide: whether an invention a machine produced can be patented when a human applies and a human is named. Dr Thaler lost in part because he declined to say he used DABUS as a tool, and the court recorded that choice. The universal filing requirement is therefore a human inventor with a documented contribution to the conception, and for a program using generative models the disclosure form should capture who posed the problem, who selected and recognized the result, and what the model did, before the application is drafted in any jurisdiction.

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Burbage Law is the practice of Jon Burbage, a registered patent attorney. 342 United States patents have issued from applications he wrote; the full list is on the Patents page. More about Jon Burbage.

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