Court of Appeal says AI software cannot be listed as patent inventor

'A patent is a statutory right and it can only be granted to a person'

The Court of Appeal of England and Wales this week dismissed a man’s plea to have his AI system recognized as the inventor of two patents.

Stephen Thaler, founder of US-based Imagination Engines, is hellbent on getting intelligent machines the credit he reckons they deserve. He swears that a fancy food container and an emergency flashing light were the brainchild of his neural network model DABUS.

Thaler has applied for multiple patents for these designs, each time naming DABUS as the inventor, in countries including the United States, UK, Australia, Israel, and South Africa.

When patent-granting agencies denied his requests, Thaler took legal action seeking to overturn those decisions. In the UK, the Intellectual Property Office rejected his applications, saying only a person or persons can be recognized as an inventor as per the nation's Patents Act. Thaler appealed to the High Court in London and lost.

In July, he took his case to the Court of Appeal, arguing that he truly believed DABUS was the inventor, which ought to be enough to satisfy section 13(2) of the act. That section of the law calls for a patent applicant to identify the person or persons they believe to be the inventor.

On Tuesday, he was shot down by judges who upheld those previous decisions in a 2-1 judgment.

Lord Justice Birss, who wished to allow the appeal, noted that if Thaler had a "genuine belief" that DABUS was the inventor, and if the Intellectual Property Office had decided to record no such person on the forms, there would have been no reason to deny the patent.

"In my judgment Dr Thaler has complied with his legal obligations under s13(2)(a)," the judge said, referring to the section in the Patents Act.

"The fact that no inventor, properly so called, can be identified simply means that there is no name which the Comptroller has to mention on the patent as the inventor. The Comptroller in these circumstances is not obliged to name anyone (or anything). The absence of a named inventor when it is clear why no name has been given and it cannot be said the applicant is not giving their genuine belief, is no basis on which to find that s13(2) has not been complied with."

He concluded: "Dr Thaler has complied with his obligations under s13(2) of the 1977 Act because he has given a statement identifying the person(s) he believes the inventor to be (s13(2)(a)) and indicating the derivation of his right to be granted the patent (s13(2)(b))."

Perhaps missing the point that Thaler didn't just want the designs patented, he wanted to set a precedent that software can be a recognized inventor, Lord Justice Birss also suggested: “There is more than a hint in this case of the idea that if only Dr Thaler was not such an obsessive and, instead of calling DABUS the inventor, he named himself and then none of these problems would arise."

In the end, Lord Justice Arnold and Lady Justice Elisabeth Laing disagreed with their colleague, and dismissed the appeal on the basis that the law says the inventor must be a person or persons. Lord Justice Arnold noted: "Dr Thaler did not identify ‘the person or persons whom he believes to be the inventor or inventors’ as required."

Only a person can have rights. A machine cannot

“A patent is a statutory right and it can only be granted to a person,” Lady Justice Liang added. “Only a person can have rights. A machine cannot.”

Thaler previously told The Register: “Humans are denying those rights in the first place, being stuck in an age-old paradigm rut in which only wet computers – ie: brains – count. What happens when a highly advanced extraterrestrial civilization visits Earth?

"Does ET deserve the equivalent of human rights? Does he dare file for patent or copyright protection? Then what happens when science achieves the download of consciousness into machines, or silicon prostheses are introduced into the protoplasmic brain? Would the system deny these people human rights? Those are mighty big questions.”

Thaler declined to confirm to El Reg on Tuesday night whether or not he was going to take the case to the UK’s Supreme Court.

“While we would of course to have preferred the appeal to have been allowed, we were very encouraged by the dissent of Lord Justice Birss who agreed with us that 'the creator of the inventions in this case was a machine is no impediment to patents being granted to this applicant…' and he would have allowed the appeal,” Thaler’s lawyer Ryan Abott told us.

“We respectfully believe this was the correct interpretation of the current state of UK law.” ®

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