Stephen Thaler v. Comptroller General of Patents Trade Marks and Designs - (27 Jul 2021)

AI Machine cannot be granted a Patent since it does not qualify as an inventor as per the Patent laws

Intellectual Property Rights

The appellant has pursued this matter to address his grievance regarding the failure of two patent applications designating an artificial intelligence machine as the inventor in the decision made in the UK Intellectual Property Office (UKIPO). The appellant seeks clarification that whether an AI machine can be considered an inventor.

The Act of 1977 states that patent can be granted to the inventor and later to the successors of the inventors, as the case may be. The same law defines “inventor” as the “actual deviser of the invention”. It is also the law that the person who makes the application for the patent is entitled to be granted that patent unless the contrary is established. The law states that such inventor should be a person who needs to be identified and the applicant, if not the sole inventor, should establish the derivation of his or their rights to be granted the patent.

It is mandatory to file a statement of inventor-ship within 16 months of the filing date of the patent applications in accordance with the patent laws. The appellant mentioned an AI machine as the inventor in the application and explained that by virtue of being the owner of the said machine, he had the right to be granted the patent.

The court, considering the law of 1623, discussed the meaning of ‘true and first inventor’ and that how the patents cannot be granted to anyone else. It was concluded by the court that ‘true and first inventors’ will also include ‘true and first importers’.

It was held that the appellant did not comply with either of the requirements laid down by the law and as a result the applications were deemed to be withdrawn. It gave effect to the statutory requirements that (i) the inventor must be a person and (ii) an applicant who is not the inventor must be able, at least in principle, to find an entitlement to apply for a patent in respect of the invention. If it was established by the appellant that the statute did not require the inventor to be a person and that, as a matter of law, he could derive his entitlement to apply for patents in respect of the inventions purely from his ownership of the product, then the position would be different. But, since such was not the case, the applications were withdrawn and the appeal was dismissed.

Tags : PATENT INVENTOR AI MACHINE