Man V. Machine | Judgement Analysis
Background
In the world of patents, the story of Thaler v. UK Intellectual Property Office isn’t a big showdown between human smarts and artificial intelligence. Instead, it’s more like a close look at how patent applications get handled. Dr. Stephen Thaler, a smart scientist, is in the middle of it all, trying to get credit for inventions his AI creation, DABUS, came up with. But this story isn’t just about man versus machine. It’s also a lesson in the risks of getting carried away with the excitement of a high-profile
case. The main point is how carefully the UK Intellectual Property Office processes patent applications. At first, they said no to two possibly game-changing patent one for a “Food Container” and another for “Devices and Methods for Attracting Enhanced Attention.”
The big question is around a part of the law called Section 13(2)(a) of the Patents Act 1977. It sounds technical, but it’s about saying who the inventor is, and it usually means a human. Dr. Thaler’s been fighting this in courts, asking if an AI machine like DABUS can count as an inventor, and whether the person who owns, made, and uses the machine can claim the patent rights.
As we go through the legal details, the point is that beyond the excitement of AI, what really matters are the basic rules of patent law and following all the legal steps. Come along as we explore this legal journey where the coolness of AI innovation meets the practical side of legal processes, making us think deep about who gets credit for inventions and how patents really work.
Facts
This case revolves around two British patent applications for inventions claimed by Dr. Thaler to be created by an AI machine named DABUS, without the involvement of a traditional human inventor. Dr. Thaler is the exclusive owner, creator, and operator of DABUS. The autonomous creation of the inventions by DABUS is undisputed. On December 4, 2019, the Respondent rendered a decision rejecting
the designation of DABUS as the inventor in the Applications under section 13(2) of the 1977 Act, contending that DABUS, not being a person as envisaged by sections 7 and 13 of the 1977 Act, does not fulfill the criteria. Dr. Thaler’s appeal of this decision was unsuccessful in both the High Court and the Court of Appeal. Further the appeal was rejected in the Supreme Court
Issue
a) Does section 13(2)(a) of the Patents Act 1977 necessitate the identification of a person as the inventor in all instances, including situations where the applicant asserts that the invention was generated by an AI machine, devoid of a conventional human inventor?
b) Does the 1977 Act permit the issuance of a patent without specifying a human inventor?
c) In the case of an invention attributed to an AI machine, is the proprietor, creator, and user of that AI machine entitled to the patent for said invention?
Held
Does DABUS qualify as an “inventor” within the meaning of the Patents Act 1977?
Upon a systematic interpretation of the 1977 Act, it becomes evident that only a person can be considered an “inventor.” Section 130(1) establishes that “‘inventor’ has the meaning assigned to it by section 7 above.” Section 7(3) defines an inventor as the “actual deviser of the invention,” and the term “deviser” implies a person who devises. Section 7(2) reinforces the personhood requirement, stating that a patent may be granted primarily to a person or persons, with (a) specifically emphasizing the necessity for inventors to be persons. Section 2(4) and section 3 also support this interpretation, referring to “the inventor or any other person.” Section 8 further affirms that entitlement to a patent involves persons, whether
through a reference or transaction. Section 13, addressing the right to be mentioned as an inventor, explicitly refers to “the inventor or joint inventors,” highlighting the personal nature of this right. In summary, the consistent language across these sections establishes that DABUS, being a non-person entity, does not meet the criteria to be recognized as an “inventor” under the 1977 Act
Is Dr Thaler entitled to apply for patents in respect of the inventions?
Dr. Thaler acknowledges that he is not the inventor of the inventions described and claimed in the patent applications. He concedes that he cannot claim entitlement to apply for a patent under section 7(2)(a) since he is not the actual deviser of the inventions. Additionally, he recognizes that he is not a successor in title to DABUS, the artificial neural system, under section 7(2)(c) due to DABUS’s lack of legal
personality. Dr. Thaler’s argument rests on the assertion that he was entitled to “the whole of the property” in the inventions by virtue of a rule of law, specifically the common law doctrine of accession. This doctrine traditionally applies to tangible property produced by existing tangible property.
The court, however, rejects Dr. Thaler’s claim, emphasizing that the doctrine of accession does not extend to intangible property, particularly the kind protected by intellectual property laws. The court underscores that the intangibles generated by machines, in this case, the inventions, are non-rivalrous goods, and the doctrine of accession, rooted in the concept of exclusive possession, is not applicable.
Furthermore, the court disputes the idea that a machine, such as DABUS, can be considered an inventor for the purposes of the 1977 Act. It emphasizes the absence of legal rights for machines and the statutory nature of modern patent law. In conclusion, the court affirms the decisions of the hearing officer and the
judge, stating that Dr. Thaler is not entitled to apply for patents for the inventions made by DABUS. In light of the legal analysis presented above, it becomes necessary to approach the application of s. 13(2) with the understanding that DABUS is legally incapable of being an inventor under the Act. While Dr. Thaler contends that he is entitled to apply for patents as the owner of DABUS, the absence of such a legal rule diminishes this argument. personality. Dr. Thaler’s argument rests on the assertion that he was entitled to “the whole of the property” in the inventions by virtue of a rule of law, specifically the common law doctrine of accession. This doctrine traditionally applies to tangible property produced by existing tangible property.
Was the hearing officer correct to hold that the applications are deemed to have been withdrawn by virtue of section 13(2) of the 1977 Act?
Reviewing the history of section 13(2), it is evident that the section aims to ensure that bona fide errors in identifying the inventor(s) or the derivation of the applicant’s title should not hinder the patent process. However, the Comptroller’s role is not to investigate or ratify the factual correctness of the answers provided by the applicant. The case of Nippon Piston Ring Co. Ltd’s Application [1987] RPC
120 is instructive in understanding the interpretation of section 13(2). It establishes that the Comptroller should not scrutinize statements of inventorship and entitlement for factual accuracy. Instead, as long as the applicant complies with the prescribed requirements, the application must proceed.
However, the requirement of section 13(2)(a) cannot be disregarded. If not complied with, the application must be deemed withdrawn. In the present case, Dr. Thaler failed to identify “the person or persons whom he believes to be the inventor or inventors.” By deliberately naming a non-person as the inventor, he provided a legal impossibility. Similarly, he did not identify the derivation of his right to be granted the patent, erroneously asserting that ownership of DABUS sufficed. Contrary to the Comptroller determining factual accuracy, this approach accepts the answers at face value. The purpose of section 13(2)(a) is not only to inform the public and third parties but also to give effect to the inventor’s paternity
right conferred by section 13(1).
In summary, Dr. Thaler’s non-compliance with the statutory requirements leads to the inevitable consequence that the applications are deemed to be withdrawn. This decision aligns with the statutory requirements that the inventor must be a person, and an applicant, not the inventor, must be able to derive entitlement to apply for a patent. Therefore, the hearing officer and the judge were correct in
determining that both applications are deemed to have been withdrawn.
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Man V. Machine | Judgement Analysis
Background
In the world of patents, the story of Thaler v. UK Intellectual Property Office isn’t a big showdown between human smarts and artificial intelligence. Instead, it’s more like a close look at how patent applications get handled. Dr. Stephen Thaler, a smart scientist, is in the middle of it all, trying to get credit for inventions his AI creation, DABUS, came up with. But this story isn’t just about man versus machine. It’s also a lesson in the risks of getting carried away with the excitement of a high-profile
case. The main point is how carefully the UK Intellectual Property Office processes patent applications. At first, they said no to two possibly game-changing patent one for a “Food Container” and another for “Devices and Methods for Attracting Enhanced Attention.”
The big question is around a part of the law called Section 13(2)(a) of the Patents Act 1977. It sounds technical, but it’s about saying who the inventor is, and it usually means a human. Dr. Thaler’s been fighting this in courts, asking if an AI machine like DABUS can count as an inventor, and whether the person who owns, made, and uses the machine can claim the patent rights.
As we go through the legal details, the point is that beyond the excitement of AI, what really matters are the basic rules of patent law and following all the legal steps. Come along as we explore this legal journey where the coolness of AI innovation meets the practical side of legal processes, making us think deep about who gets credit for inventions and how patents really work.
Facts
This case revolves around two British patent applications for inventions claimed by Dr. Thaler to be created by an AI machine named DABUS, without the involvement of a traditional human inventor. Dr. Thaler is the exclusive owner, creator, and operator of DABUS. The autonomous creation of the inventions by DABUS is undisputed. On December 4, 2019, the Respondent rendered a decision rejecting
the designation of DABUS as the inventor in the Applications under section 13(2) of the 1977 Act, contending that DABUS, not being a person as envisaged by sections 7 and 13 of the 1977 Act, does not fulfill the criteria. Dr. Thaler’s appeal of this decision was unsuccessful in both the High Court and the Court of Appeal. Further the appeal was rejected in the Supreme Court
Issue
a) Does section 13(2)(a) of the Patents Act 1977 necessitate the identification of a person as the inventor in all instances, including situations where the applicant asserts that the invention was generated by an AI machine, devoid of a conventional human inventor?
b) Does the 1977 Act permit the issuance of a patent without specifying a human inventor?
c) In the case of an invention attributed to an AI machine, is the proprietor, creator, and user of that AI machine entitled to the patent for said invention?
Held
Does DABUS qualify as an “inventor” within the meaning of the Patents Act 1977?
Upon a systematic interpretation of the 1977 Act, it becomes evident that only a person can be considered an “inventor.” Section 130(1) establishes that “‘inventor’ has the meaning assigned to it by section 7 above.” Section 7(3) defines an inventor as the “actual deviser of the invention,” and the term “deviser” implies a person who devises. Section 7(2) reinforces the personhood requirement, stating that a patent may be granted primarily to a person or persons, with (a) specifically emphasizing the necessity for inventors to be persons. Section 2(4) and section 3 also support this interpretation, referring to “the inventor or any other person.” Section 8 further affirms that entitlement to a patent involves persons, whether
through a reference or transaction. Section 13, addressing the right to be mentioned as an inventor, explicitly refers to “the inventor or joint inventors,” highlighting the personal nature of this right. In summary, the consistent language across these sections establishes that DABUS, being a non-person entity, does not meet the criteria to be recognized as an “inventor” under the 1977 Act
Is Dr Thaler entitled to apply for patents in respect of the inventions?
Dr. Thaler acknowledges that he is not the inventor of the inventions described and claimed in the patent applications. He concedes that he cannot claim entitlement to apply for a patent under section 7(2)(a) since he is not the actual deviser of the inventions. Additionally, he recognizes that he is not a successor in title to DABUS, the artificial neural system, under section 7(2)(c) due to DABUS’s lack of legal
personality. Dr. Thaler’s argument rests on the assertion that he was entitled to “the whole of the property” in the inventions by virtue of a rule of law, specifically the common law doctrine of accession. This doctrine traditionally applies to tangible property produced by existing tangible property.
The court, however, rejects Dr. Thaler’s claim, emphasizing that the doctrine of accession does not extend to intangible property, particularly the kind protected by intellectual property laws. The court underscores that the intangibles generated by machines, in this case, the inventions, are non-rivalrous goods, and the doctrine of accession, rooted in the concept of exclusive possession, is not applicable.
Furthermore, the court disputes the idea that a machine, such as DABUS, can be considered an inventor for the purposes of the 1977 Act. It emphasizes the absence of legal rights for machines and the statutory nature of modern patent law. In conclusion, the court affirms the decisions of the hearing officer and the
judge, stating that Dr. Thaler is not entitled to apply for patents for the inventions made by DABUS. In light of the legal analysis presented above, it becomes necessary to approach the application of s. 13(2) with the understanding that DABUS is legally incapable of being an inventor under the Act. While Dr. Thaler contends that he is entitled to apply for patents as the owner of DABUS, the absence of such a legal rule diminishes this argument. personality. Dr. Thaler’s argument rests on the assertion that he was entitled to “the whole of the property” in the inventions by virtue of a rule of law, specifically the common law doctrine of accession. This doctrine traditionally applies to tangible property produced by existing tangible property.
Was the hearing officer correct to hold that the applications are deemed to have been withdrawn by virtue of section 13(2) of the 1977 Act?
Reviewing the history of section 13(2), it is evident that the section aims to ensure that bona fide errors in identifying the inventor(s) or the derivation of the applicant’s title should not hinder the patent process. However, the Comptroller’s role is not to investigate or ratify the factual correctness of the answers provided by the applicant. The case of Nippon Piston Ring Co. Ltd’s Application [1987] RPC
120 is instructive in understanding the interpretation of section 13(2). It establishes that the Comptroller should not scrutinize statements of inventorship and entitlement for factual accuracy. Instead, as long as the applicant complies with the prescribed requirements, the application must proceed.
However, the requirement of section 13(2)(a) cannot be disregarded. If not complied with, the application must be deemed withdrawn. In the present case, Dr. Thaler failed to identify “the person or persons whom he believes to be the inventor or inventors.” By deliberately naming a non-person as the inventor, he provided a legal impossibility. Similarly, he did not identify the derivation of his right to be granted the patent, erroneously asserting that ownership of DABUS sufficed. Contrary to the Comptroller determining factual accuracy, this approach accepts the answers at face value. The purpose of section 13(2)(a) is not only to inform the public and third parties but also to give effect to the inventor’s paternity
right conferred by section 13(1).
In summary, Dr. Thaler’s non-compliance with the statutory requirements leads to the inevitable consequence that the applications are deemed to be withdrawn. This decision aligns with the statutory requirements that the inventor must be a person, and an applicant, not the inventor, must be able to derive entitlement to apply for a patent. Therefore, the hearing officer and the judge were correct in
determining that both applications are deemed to have been withdrawn.
Amul Strikes Back: Court Defends Iconic Trademark Against ‘Amuleti’ Infringement
Changing Trends in Trademark Enforcement Rights
Copyright Infringement – Section 63, A Cognizable and Non-Bailable Offence
The Wake-Up Call: Why Indian Companies Should Prioritize Intellectual Property Management
Man V. Machine | Judgement Analysis
Background
In the world of patents, the story of Thaler v. UK Intellectual Property Office isn’t a big showdown between human smarts and artificial intelligence. Instead, it’s more like a close look at how patent applications get handled. Dr. Stephen Thaler, a smart scientist, is in the middle of it all, trying to get credit for inventions his AI creation, DABUS, came up with. But this story isn’t just about man versus machine. It’s also a lesson in the risks of getting carried away with the excitement of a high-profile
case. The main point is how carefully the UK Intellectual Property Office processes patent applications. At first, they said no to two possibly game-changing patent one for a “Food Container” and another for “Devices and Methods for Attracting Enhanced Attention.”
The big question is around a part of the law called Section 13(2)(a) of the Patents Act 1977. It sounds technical, but it’s about saying who the inventor is, and it usually means a human. Dr. Thaler’s been fighting this in courts, asking if an AI machine like DABUS can count as an inventor, and whether the person who owns, made, and uses the machine can claim the patent rights.
As we go through the legal details, the point is that beyond the excitement of AI, what really matters are the basic rules of patent law and following all the legal steps. Come along as we explore this legal journey where the coolness of AI innovation meets the practical side of legal processes, making us think deep about who gets credit for inventions and how patents really work.
Facts
This case revolves around two British patent applications for inventions claimed by Dr. Thaler to be created by an AI machine named DABUS, without the involvement of a traditional human inventor. Dr. Thaler is the exclusive owner, creator, and operator of DABUS. The autonomous creation of the inventions by DABUS is undisputed. On December 4, 2019, the Respondent rendered a decision rejecting
the designation of DABUS as the inventor in the Applications under section 13(2) of the 1977 Act, contending that DABUS, not being a person as envisaged by sections 7 and 13 of the 1977 Act, does not fulfill the criteria. Dr. Thaler’s appeal of this decision was unsuccessful in both the High Court and the Court of Appeal. Further the appeal was rejected in the Supreme Court
Issue
a) Does section 13(2)(a) of the Patents Act 1977 necessitate the identification of a person as the inventor in all instances, including situations where the applicant asserts that the invention was generated by an AI machine, devoid of a conventional human inventor?
b) Does the 1977 Act permit the issuance of a patent without specifying a human inventor?
c) In the case of an invention attributed to an AI machine, is the proprietor, creator, and user of that AI machine entitled to the patent for said invention?
Held
Does DABUS qualify as an “inventor” within the meaning of the Patents Act 1977?
Upon a systematic interpretation of the 1977 Act, it becomes evident that only a person can be considered an “inventor.” Section 130(1) establishes that “‘inventor’ has the meaning assigned to it by section 7 above.” Section 7(3) defines an inventor as the “actual deviser of the invention,” and the term “deviser” implies a person who devises. Section 7(2) reinforces the personhood requirement, stating that a patent may be granted primarily to a person or persons, with (a) specifically emphasizing the necessity for inventors to be persons. Section 2(4) and section 3 also support this interpretation, referring to “the inventor or any other person.” Section 8 further affirms that entitlement to a patent involves persons, whether
through a reference or transaction. Section 13, addressing the right to be mentioned as an inventor, explicitly refers to “the inventor or joint inventors,” highlighting the personal nature of this right. In summary, the consistent language across these sections establishes that DABUS, being a non-person entity, does not meet the criteria to be recognized as an “inventor” under the 1977 Act
Is Dr Thaler entitled to apply for patents in respect of the inventions?
Dr. Thaler acknowledges that he is not the inventor of the inventions described and claimed in the patent applications. He concedes that he cannot claim entitlement to apply for a patent under section 7(2)(a) since he is not the actual deviser of the inventions. Additionally, he recognizes that he is not a successor in title to DABUS, the artificial neural system, under section 7(2)(c) due to DABUS’s lack of legal
personality. Dr. Thaler’s argument rests on the assertion that he was entitled to “the whole of the property” in the inventions by virtue of a rule of law, specifically the common law doctrine of accession. This doctrine traditionally applies to tangible property produced by existing tangible property.
The court, however, rejects Dr. Thaler’s claim, emphasizing that the doctrine of accession does not extend to intangible property, particularly the kind protected by intellectual property laws. The court underscores that the intangibles generated by machines, in this case, the inventions, are non-rivalrous goods, and the doctrine of accession, rooted in the concept of exclusive possession, is not applicable.
Furthermore, the court disputes the idea that a machine, such as DABUS, can be considered an inventor for the purposes of the 1977 Act. It emphasizes the absence of legal rights for machines and the statutory nature of modern patent law. In conclusion, the court affirms the decisions of the hearing officer and the
judge, stating that Dr. Thaler is not entitled to apply for patents for the inventions made by DABUS. In light of the legal analysis presented above, it becomes necessary to approach the application of s. 13(2) with the understanding that DABUS is legally incapable of being an inventor under the Act. While Dr. Thaler contends that he is entitled to apply for patents as the owner of DABUS, the absence of such a legal rule diminishes this argument. personality. Dr. Thaler’s argument rests on the assertion that he was entitled to “the whole of the property” in the inventions by virtue of a rule of law, specifically the common law doctrine of accession. This doctrine traditionally applies to tangible property produced by existing tangible property.
Was the hearing officer correct to hold that the applications are deemed to have been withdrawn by virtue of section 13(2) of the 1977 Act?
Reviewing the history of section 13(2), it is evident that the section aims to ensure that bona fide errors in identifying the inventor(s) or the derivation of the applicant’s title should not hinder the patent process. However, the Comptroller’s role is not to investigate or ratify the factual correctness of the answers provided by the applicant. The case of Nippon Piston Ring Co. Ltd’s Application [1987] RPC
120 is instructive in understanding the interpretation of section 13(2). It establishes that the Comptroller should not scrutinize statements of inventorship and entitlement for factual accuracy. Instead, as long as the applicant complies with the prescribed requirements, the application must proceed.
However, the requirement of section 13(2)(a) cannot be disregarded. If not complied with, the application must be deemed withdrawn. In the present case, Dr. Thaler failed to identify “the person or persons whom he believes to be the inventor or inventors.” By deliberately naming a non-person as the inventor, he provided a legal impossibility. Similarly, he did not identify the derivation of his right to be granted the patent, erroneously asserting that ownership of DABUS sufficed. Contrary to the Comptroller determining factual accuracy, this approach accepts the answers at face value. The purpose of section 13(2)(a) is not only to inform the public and third parties but also to give effect to the inventor’s paternity
right conferred by section 13(1).
In summary, Dr. Thaler’s non-compliance with the statutory requirements leads to the inevitable consequence that the applications are deemed to be withdrawn. This decision aligns with the statutory requirements that the inventor must be a person, and an applicant, not the inventor, must be able to derive entitlement to apply for a patent. Therefore, the hearing officer and the judge were correct in
determining that both applications are deemed to have been withdrawn.
Amul Strikes Back: Court Defends Iconic Trademark Against ‘Amuleti’ Infringement
Changing Trends in Trademark Enforcement Rights
Copyright Infringement – Section 63, A Cognizable and Non-Bailable Offence
The Wake-Up Call: Why Indian Companies Should Prioritize Intellectual Property Management
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