Thaler v Comptroller General of Patents Trade Marks and Designs: CA 21 Sep 2021

AI created Invention is not Patentable

The case appears to be about artificial intelligence and whether AI-based machines can make patentable inventions – correct processing of application
Held: The appeal failed. On the face of the Form 7s he filed, Dr Thaler did not comply with either of the requirements laid down by section 13(2), and the inevitable consequence is that the applications are deemed to be withdrawn. This is not to introduce some new, non-statutory ground for refusing patent applications. On the contrary, it gives 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 found an entitlement to apply for a patent in respect of the invention.
Birss LJ dissenting argued that it was not the role of the Comptroller to rule on entitlement to an application and that such applications should proceed with no named inventor.

Arnold, Elisabeth Laing DBE, Birss LJ
[2021] EWCA Civ 1374
Patents Act 1977 7 13, Statute of Monopolies of 1623, Patents Act 1949 1
England and Wales
CitedYeda Research and Development Company Ltd v Rhone-Poulenc Rorer International Holdings Inc and others HL 24-Oct-2007
The claimants said that the defendant had misused confidential information sent to him to found an application for a patent, claiming wrongly to have been its inventor. The claimant appealed a refusal by the court to allow amendments to the . .
Appeal FromThaler v The Comptroller-General of Patents, Designs and Trade Marks PatC 21-Sep-2020
Patent – artificial intelligence machine as inventor
Held: An artificial intelligence machine is not a person able to apply for registration as an inventor, and the applicant had not shown ownership – Although the judge was prepared to accept . .
CitedNippon Piston Ring Co’s Application ChD 1987
The applicant had not filed his statement of inventorship form the time allowed, although in he had indirectly identified the inventors and the Hearing Officer Mr Panchen held that s13(2)(a) was satisfied. However nothing at all had been said about . .
CitedAerotel Ltd v Telco Holdings Ltd and others, In re Patent Application GB 0314464.9 in the name of Neal Macrossan Rev 1 CA 27-Oct-2006
In each case it was said that the requested patent concerned an invention consisting of a computer program, and was not therefore an invention and was unpatentable. In one case a patent had been revoked on being challenged, and in the other, the . .
CitedAbbott Laboratories Ltd v Medinol Ltd PatC 12-Nov-2010
Request for declaration of non-infringement of and for revocation of patents.
Held: Even if provisions are not listed in s130(7), it is undesirable for provision in our domestic law which in fact do correspond to provisions in the EPC to be . .

Lists of cited by and citing cases may be incomplete.

Intellectual Property

Updated: 01 November 2021; Ref: scu.668142