In recent weeks, the UK government published its National AI Strategy, which outlines plans to consult this autumn on the extent to which copyright and patents should protect AI-generated inventions and created works. This consultation was prompted by a Call for Views which indicated divergent opinions on, in particular, the issue of patent inventorship, with many respondents raising concerns that not recognising an AI machine as an inventor could have a detrimental impact on innovation and transparency in the innovation process (we discuss the Call for Views here).
The outcome of the consultation may lead to changes in policy, which may in turn necessitate revisions to the UK Patents Act. However, in the meantime,, a test case before the UK courts (as well as before courts and IP offices globally), Thaler v Comptroller General of Patents Trade Marks And Designs  EWCA Civ 1374, has confirmed the position under the current law: all judges in the Court of Appeal agreed that an AI machine cannot be an inventor under the 1977 Patents Act. There was a disagreement, however, as to whether a patent application which contained a statement of inventorship to that effect was valid under the Act, with the majority concluding that it was not.
The policy arguments as to whether an AI machine should be named as an inventor will of course be aired in the forthcoming consultation. However, given the split view in the Court of Appeal on the law as it currently stands in relation to the statement of inventorship required for a patent application, it seems likely that permission to appeal from the Supreme Court will be sought.
We have previously written about the earlier stages of this case. The UKIPO had refused Dr Stephen Thaler's two patent applications which had named DABUS (Device for the Autonomous Bootstrapping of Unified Sentience), an AI machine, as the inventor, and which stated that his right to be granted a patent was on the basis of his ownership of the DABUS machine. Dr Thaler specifically did not want to name himself as the inventor.
The UKIPO's decision was upheld by the High Court on the basis that the natural meaning of the Patents Act was that the inventor was a 'person'.
Court of Appeal decision
Does the Patents Act 1977 require that an inventor be a person?
All of the Court of Appeal judges agreed that, within the meaning of section 7 of the 1977 Act, the inventor of a patent must be the (natural or legal) person who devised the invention. This required no assessment of policy arguments: DABUS, the machine, had no statutory right to be mentioned as the inventor.
Was Dr Thaler entitled to apply for a patent under section 7 of the Patents Act 1977?
Dr Thaler argued that he was entitled to the 'whole of the property' in the inventions by virtue of a rule of law, and was therefore entitled to apply under section 7(2)(b), through his ownership of the DABUS machine. However, Lord Justice Arnold concluded that there was no rule of law that a new intangible produced by existing tangible property is the property of the owner of the tangible property. Further, there was no rule that an invention created by a machine is owned by the owner of the machine.
How does section 13(2) of the Patents Act 1977 operate?
Section 13(2) of the Patents Act requires an applicant for a patent to (a) identify the person/s they believe to be the inventor/s and, (b) if they are not themselves the inventor, to indicate the derivation of their right to be granted the patent (failing which the application is taken to be withdrawn).
Lord Justice Birss' view was that, if the Comptroller of Patents was satisfied that what the applicant had provided in relation to the inventor was their genuine belief, this should be sufficient to satisfy the requirements of section 13(2)(a). The purpose of the provision was simply to give information which would be made public, and did not require an examination of the applicant's claimed right to be granted the patent. There was therefore – in Lord Justice Birss' view – no need for the Comptroller to examine the correctness of Dr Thaler's claim to the grant of the patent. He noted that if an applicant identified someone silly, like naming their cat as the inventor, then this would be deficient. While Dr Thaler had identified no person as the inventor, as he believed there was no human inventor, his statement was not doubted to be an honest one of his belief. Therefore, Birss LJ concluded that he had complied with his obligations and his application should not be deemed to have been withdrawn.
However, the majority of the Court of Appeal (Lord Justice Arnold, whose judgment was supported by Lady Justice Elisabeth Laing), concluded that Dr Thaler had not identified the person/s he believed to be the inventor/s but had, on the contrary, deliberately identified a non-person as the inventor. It was 'neither here nor there' that he may have genuinely believed that DABUS was the inventor, as the answer he gave to the question was a legal impossibility.
The Court of Appeal was referred to decisions of the European Patent Office and US PTO, both of which have also rejected Dr Thaler's equivalent applications, albeit both decisions are under appeal (the appeal at the EPO appeal will be heard in December 2021). However, the Federal Court of Australia has recently allowed an application via the Patent Cooperation Treaty (PCT) and an application in South Africa, also via the PCT route, has been granted. The Court gave this little attention other than to note that the legislation in the UK was quite distinct from that that applied in those jurisdictions.
The Comptroller had argued that the appeal should be dismissed because of the forthcoming consultation. However, the policy arguments were entirely irrelevant before the Court of Appeal - its decision was, of course, based entirely on the existing legislative position. It will be interesting to see if permission is sought to appeal to the Supreme Court, given the pending consultation in which the policy issues will be keenly debated.