In a recent case the Supreme Court of United Kingdom had to deal with the issue of artificial intelligence and law. In the case before it the Supreme Court had to decide an appeal which concerned two applications made under the patents act 1977 for the grant of patents for products and processes which are said to be new and not obvious developments of anything known before.
The unusual feature of the case was twofold:
- the inventions relating to the two applications were generated by a machine autonomously by artificial intelligence
- the person making the application maintained that he is entitled to make and pursue the applications since he is the owner of that machine.
Let us delve into the factual matrix of the case;
Doctor Thaler files an application for the grant of a patent for inventing a new kind of food all beverage container and a new kind of light beacon and the new way of attracting attention in an emergency. These applications verified on 17th October 2018 and 7th November 2018 under the 1977 Act .
It is relevant to mention that at the time of making these applications Dr Thaler Mentioned that he is not an inventor of the inventions described in the application.
UK IPO sort further information from doctor Thaler.
On 23rd July 2019 applicant informed UK IPO that each of these inventions was created by the AI of machine called DABUS and since he is the owner of this machine hence he has acquired the right to the grant of the patents.
Hearing of the matter took place and the hearing officer held that DABUS Is not a person as envisaged by Section 7 or section 13 of the 1977 act and was not an inventor. It was also held that applicant Dr Thaler was not entitled to the grant of a patent on the basis that he owned DABUS.
The applications were consequently held to be withdrawn.
Dr Thaler appealed to High Court against the verdict. However the High Court upheld the decision of the Comptroller.
Another appeal was made from the high courts verdict to the Court of Appeal.
Court of Appeal by a majority hell with that DABUS did not qualify as an inventor within the meaning of the 1977 act because such an inventor was required to be a person.
Against these judgments the matter reached Supreme Court of UK and that judgment was delivered on December 20th 2023 by the Supreme Court of UK.
Supreme Court of UK consider the provisions of Section 7 end section 13 of the 1977 act and the rules of 2007 and then framed the following issues;
- the scope and meaning of inventor in the 1977 act
- was doctor Thaler nevertheless the owner of any invention in any technical advance made by DABUS and entitled to apply for and obtain a patent in respect of it?
- Was the hearing officer entitled to hold that the applications would be taken to be withdrawn?
Supreme Court analyzed the provisions of Section 7 and 13 of the act and held :
“an inventor within the meaning of the 1977 act must be a natural person, and DABUS is not a person at all, let alone a natural person: it is a machine and on the factual assumption underpinning these proceedings; created or generated the technical advances disclosed in the applications on its own”
Supreme Court dealt with this issue of Dr Thaler Claiming the right to apply for and obtain a patent since he is the owner of DABUS .
In paragraphs 77-79 of the judgment Supreme Court analyzes this issue and comes to its own conclusions.
“ Secondly, the applicant, if not the inventor, must be a person falling within one of the limbs of Section 7(2)(b) search that, in preference to the inventor, this person was, at the time of the making of the invention, entitled to the whole of the property in it in the United Kingdom. Alternatively, under section 7(2)(c) This person must be the successor in title to any person mentioned in paragraph(a) or(b).
In my opinion,Dr Thaler does not satisfy any part of this carefully structured code. Section 7 does not confirm on any person a right to obtain a patent for any new product or process created or generated autonomously by a machine, such as DABUS , let alone a person who claims that right purely on the basis of ownership of the machine. This fundamental premise of the 1977 act is made explicit in Section 7(2)(b) on which Dr Thaler relies, as the references to “the invention” are necessarily references to an invention devised by a person. Put another way, I agree with Elizabeth Laing LJ who said, at para 103 of the judgment of the Court of Appeal:
“whether or not thinking machines were capable of devising inventions in 1977, it is clear to me that parliament did not have them in mind when enacting this scheme. If patents are to be granted in respect of inventions made by machines, the 1977 act will have to be amended”
Since the applicant failed to file with the UK IPO a statement identifying the person or persons who me believes to be the inventor or inventors; and where, as here, the applicant is not the inventor indicating the derivation of his right to be granted the patent hence the Comptroller was held to be right in holding that applications are withdrawn.
To sum up, a new jurisprudence is gradually developing in the arena of artificial intelligence and law. The present case decided by the Supreme Court of United Kingdom pertains to the issue of law of patents and whether an invention by AI and a machine can be registered as a patent of the owner of the machine.
AI will open up new vistas in myriad and unimaginable ways . Patents and copyright and intellectual property are just the beginning . Future will prove whether existing laws and structures on which the edifice of legal world is built would suffice to ensure justice and peace prevail or a drastic evolution would be required in all walks of life to keep pace with science and emerging technology .
Article by Mr Rishad Murtaza
Advocate, Supreme Court Of India