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Thaler v Comptroller-General of Patents, Designs and Trade Marks

[2023] UKSC 49
A man tried to get patents for inventions made by his AI. The UK Supreme Court said only humans can be inventors under the law, and he couldn't get the patents because he didn't name a human inventor. Owning the AI wasn't enough.

Key Facts

  • Dr. Thaler applied for patents for inventions he claimed were made by DABUS, an AI machine.
  • Dr. Thaler claimed ownership of DABUS as the basis for his patent applications.
  • The applications did not identify a human inventor.
  • The UKIPO rejected the applications for failure to identify a human inventor and adequately explain the derivation of Dr. Thaler's right to apply for the patents.
  • The High Court and Court of Appeal (majority) upheld the UKIPO's decision.
  • This appeal concerns the interpretation of sections 7 and 13 of the Patents Act 1977.

Legal Principles

An inventor under the Patents Act 1977 must be a natural person.

Patents Act 1977, sections 7(3) and 13

Section 7 of the 1977 Act provides an exhaustive code for determining who is entitled to a patent grant; only the inventor or someone claiming through the inventor is eligible.

Patents Act 1977, section 7

Section 13 of the 1977 Act requires applicants to identify the inventor(s) and explain how they derive their right to apply if they are not the inventor; failure results in application withdrawal.

Patents Act 1977, section 13

The doctrine of accession does not apply to confer ownership of an invention created by a machine on the machine's owner.

Court of Appeal judgment and Supreme Court reasoning

Outcomes

The Supreme Court dismissed Dr. Thaler's appeal.

Dr. Thaler failed to satisfy the requirements of sections 7 and 13 of the Patents Act 1977. DABUS, as a machine, cannot be an inventor, and Dr. Thaler did not establish a legal basis for claiming entitlement to the patents based solely on his ownership of DABUS.

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