Tech & Sourcing @ Morgan Lewis


On Monday 21 September, the UK High Court (Patents) delivered its judgment on the DABUS appeal, as previously reported here by Morgan Lewis.

Justice Marcus Smith dismissed the appeal brought by physicist Stephen Thaler, who claimed that his artificially intelligent (AI) creation, DABUS, had produced inventions on its own initiative. The dismissal follows a chain of disappointment for Dr. Thaler; the UK Intellectual Property Office (UKIPO), European Patent Office (EPO) and US Patent and Trademark Office (USPTO) all denied his initial patent applications in 2018 and 2019.

The Judgment

Justice Smith dismissed the appeal on various grounds, two of which relied on statutory interpretation of the Patents Act 1977 (the Patents Act).

  1. Prejudgment of Dr. Thaler’s case. Dr. Thaler’s argument that, in the initial trial, Mr. Huw Jones (acting for the Comptroller) had prejudiced the outcome of the decision. Justice Smith swiftly dismissed this ground, calling the point “unarguable.
  2. Incorrect purposive construction. Dr. Thaler suggested that Mr. Jones had "incorrectly focussed" on the inventor's motivation to innovate and disclose. Justice Smith dismissed this ground.
  3. Section 13 Patents Act. Justice Smith concluded that “the suggestion that nothing more than a subjective belief on the part of an applicant that that applicant is entitled to apply for a patent, supported by a statement … is sufficient to entitle that applicant to the grant of a patent is, quite simply, nonsense.”
  4. Section 7 Patents Act. It was reiterated that, as a machine and not a “person,” DABUS cannot make an application for a patent, whether by itself or jointly. It is not possible to conclude that, because DABUS invented something and Dr. Thaler owns DABUS, Dr. Thaler is entitled to the grant of a patent. There must either be an application by the inventor (which cannot be made because DABUS is not an inventor nor a person) or the inventor must have transferred the right to apply enabling Dr. Thaler to apply (which again cannot be in this case).

Dismissal Postscript

In his postscript, Justice Smith made two notable points:

  • Firstly, that his conclusions were made by exclusive reference to the Patents Act 1977; further allusions made by both parties to “legal materials ranging well beyond the Patents Act 1977” did not provide sufficient analogy to assist Justice Smith.
  • Secondly, Justice Smith noted that the (to some extent, pivotal) question of whether the controller of an AI machine that invents can be himself the inventor was not argued before him. He comments that “whether the argument succeeds or not is a different question and not one for this appeal: but it would be wrong to regard this judgment as discouraging an applicant from at least advancing the contention, if so advised.”

By declining to qualitatively assess whether an AI can be an “inventor,” Justice Smith may indirectly induce further jurisprudence in future.  

Another appeal, which was filed in the EPO in March 2020, is awaiting judgment. Morgan Lewis shall update this blog as the appeals progress.