Breaking news: UK Supreme Court confirms that an inventor under UK Patents Act 1977 must be a natural person

The UK Supreme Court has today handed down its decision Thaler v Comptroller [2023] UKSC 49. The judgment under appeal by the Court of Appeal was reported here. In a short judgment, the Supreme Court agrees with the majority in the Court of Appeal and rejects the appeal from Thaler.

The outcome of this appeal turned on three issues:

• Issue 1 is the scope and meaning of ‘inventor’ in the 1977 Act. The Supreme Court held that the inventor within the meaning of the 1977 Act must be a natural person, and the AI machine DABUS is not a person let alone a natural person ([54] – [65]).
• Issue 2 is whether Dr Thaler was 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. The Court considered that section 7 of the 1977 Act does not confer on any person a right to obtain a patent for any new product or process created autonomously by a machine, let alone a person claiming that right purely on the basis of ownership of the machine. The doctrine of accession relied upon by Thaler does not, as a matter of law, operate to confer on him the property in or the right to apply for and obtain a patent for any technical development made by DABUS. Thaler has never had any right to secure the grant to himself of patents under the 1977 Act in respect of anything described in the applications ([74] – [90]).
• Issue 3 is whether the Hearing Officer was entitled to hold that the applications would be taken to be withdrawn. As DABUS is not a person, Thaler has failed to satisfy section 13(2)(a) of the 1977 Act. The condition in section 13(2)(b) is not fulfilled either. The applications must now be taken to have been withdrawn ([91] – [98]).

The appeal is therefore dismissed.

This Kat will now read the judgment carefully and provide a more detailed report.