Thaler v Comptroller-General of Patents, Designs and Trade Marks [2023] UKSC 49 (20 December 2023)
Citation: Thaler v Comptroller-General of Patents, Designs and Trade Marks [2023] UKSC 49 (20 December 2023)
Rule of thumb: If AI programme software has come up with a new invention, can the AI be deemed to be the inventor? No, in order for a patent to be registered, there requires to be a human inventor. AI innovations are ‘open source’ developments which can be used by everyone.
This case was in the subject of legal personality & patents.
Background facts: The basic facts were that an application was put in for a patent. This was for a new food container that was created with a new light emitter on it which could be seen from far away so used in emergencies (like people lost at sea or in the countryside). The owner listed on the patent application was an AI programme.
The parties argued over whether an AI programme could be deemed to be the owner of a patent. The patent Act 1977 sections 7 & 13 stated that a requirement was that a person came up with it, and so the patent registration office refused to register the patent on this technicality. The human being making the application who wrote the AI programme, Dr Thaler, argued that it was the company who was the person.
Court held: The Court refused the application. They held that even if it is a company making the application which has legal personality, there actually has to be a human being who is the inventor. Inventions which an AI programme has come up with cannot be registered as patents as an AI programme does not have legal personality. This innovation was part of the creative commons which could be used by all in society.
Ratio-decidendi:
‘Here Dr Thaler faces two formidable difficulties. The first is that DABUS, a machine with no legal personality, is not and has never been an inventor within the meaning of the 1977 Act. This is more than a formal objection. It goes to the heart of the system for granting a monopoly for an invention. The second is that Dr Thaler, on his own case, has no independent right to obtain a patent in respect of any such technical advance… For all of these reasons, I am satisfied the Comptroller was right to find the applications would be taken to be withdrawn at the expiry of the sixteen-month period specified by rule 10(3). The judge and the majority of the Court of Appeal made no error in affirming that decision and in finding that the applications are now deemed to have been withdrawn. I would dismiss this appeal’.
Lord Kitchin at 75 & 99
Warning: This is not professional legal advice. This is not professional legal education advice. Please obtain professional guidance before embarking on any legal course of action. This is just an interpretation of a Judgment by persons of legal insight & varying levels of legal specialism, experience & expertise. Please read the Judgment yourself and form your own interpretation of it with professional assistance.