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21 September 2021PatentsMuireann Bolger

English Court of Appeal rejects DABUS appeal, Birss dissents

The English Court of Appeal has rejected physicist Stephen Thaler’s latest bid to list his artificial intelligence (AI) machine as an inventor in a 2:1 decision.

The judgment was handed down today, Tuesday 21 September, and saw Justice Colin Birss dissenting from the majority judgment upholding the English High Court’s rejection of Thaler’s attempts to designate the AI as a patent owner.

In July 2019, a team at the University of Surrey led by Ryan Abbott filed patent applications in multiple jurisdictions that listed the AI application, Device for the Autonomous Bootstrapping of Unified Sentience (DABUS), as the sole inventor of a food product and an emergency light.

The campaign effectively proposes rewriting IP law, as no AI application has to date been recognised anywhere as the inventor on a granted patent. According to the team, the ban on AI-inventors is out of step with a rapidly changing economy in which machines and AI are becoming more powerful, and more important in driving innovation.

In a decision handed down in September last year, the English High Court upheld the UK Intellectual Property Office’s contention that DABUS could not be considered an inventor. Upon dismissing the appeal, it also ruled that patent rights could not be transferred to Thaler.

On further appeal, Thaler argued that he is not an inventor of either of the inventions and cannot claim entitlement to apply for a patent.

‘Distracted by glamour’

In his summation, Justice Birss argued that the case related to the correct way to process patent applications rather than the concept of AI inventorship itself, and that the controversy around the appeal was “an object lesson in the risks of advocacy being distracted by glamour”.

He further contended that while Thaler’s statement of inventorship form was held not to satisfy the Patents Act 1977 in the earlier ruling, there was no suggestion that “Thaler has done anything other than complete it fully and honestly”.

Justice Birss determined that while the Patents Act was clearly written on the assumption that inventors were persons, that “was not and ought not to be a requirement of the law”.

He further recommended that “the concept of the inventor as the actual deviser of the invention” should replace that of the "true and first inventor", and that applicants should be free to name those who they believed to be the inventors, and those inventors should be named in the published specifications.

“The fact that the creator of the inventions in this case was a machine is no impediment to patents being granted to this applicant,” concluded Birss.

But Justice Elisabeth Laing disagreed with Justice Birss’ conclusion that Thaler filed a statement “in which he has identified the person or persons whom he believes to be the inventors”.

She stated that: “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”.

‘A legal impossibility’

Lord Justice Arnold sided with Justice Laing, finding that Thaler did not identify "the person or persons whom he believes to be the inventor or inventors”, as required by the act.

“The fact that he may genuinely have believed that DABUS was the inventor is neither here nor there. The answer he gave to the question was a legal impossibility. This analysis does not involve the Comptroller in determining whether or not the answer given was factually accurate. On the contrary, it takes the answer given entirely at face value,” he concluded.

This latest decision comes in the wake of fiercely debated rulings around the legality and implications of naming an AI as an inventor

Last month, the Australian Federal Court became the first court to claim that artificial intelligence (AI) can be an inventor. In August, South Africa also became the first country to recognise DABUS as an inventor, albeit under non-substantive criteria.

This decision went against the trend set by courts in the UK and US and, according to Abbot, could influence other country’s future attitudes towards AI inventorship.

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