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UK Supreme Court ruled that AI cannot be an inventor for UK patents

Intellectual Property Artificial Intelligence 20 December 2023

After hearing the case of Thaler v Comptroller General of Patents Trade Marks and Designs in March earlier this year, the UK Supreme Court has ruled, in a hotly anticipated judgment, that an inventor within the meaning of the Patents Act 1977 (the "1977 Act") must be a natural person who devises a new and non-obvious product or process (the invention), and that an AI system cannot be an inventor.

What is the case about?

In late 2018, Dr Thaler filed two patent applications, naming the AI system DABUS as the inventor for two different inventions. He notably stated that he himself was not an inventor of the inventions and that the inventions were "entirely and solely conceived by DABUS". The UKIPO deemed his applications to be non-compliant with the 1977 Act, as he failed to identify a person whom he believed to be the inventor of the inventions and to explain how he derived the right to apply for the patents. The Comptroller eventually found that the patent applications must be taken to have been withdrawn after a 16-month prescribed period under section 13(2) of the 1977 Act. Dr Thaler's subsequent appeals in the High Court and the Court of Appeal were unsuccessful as both Courts (interestingly with the Court of Appeal reaching a majority rather than unanimous decision) upheld the Comptroller's decision.

What did the Supreme Court decide?

The Supreme Court's judgment, given by Lord Kitchin and agreed by the other Lords, began by saying that this appeal is strictly about the interpretation and application of the 1977 Act to the applications filed by Dr Thaler. The Court was not concerned with broader questions such as whether "technical advances" generated by autonomous machines or machines powered by AI should be patentable and whether the scope for the term "inventor" should be expanded as they raise policy issues. The Court did, however, note that those questions have become increasingly important.

The Court decided that:

  • an inventor within the meaning of the 1977 Act must be a natural person, i.e. a human being. Since DABUS is a machine and not a natural person with legal personality, it cannot be named an inventor. The Court ruled that this interpretation is consistent with the broader context in the 1977 Act having considered sections 2(4), 7 and 37 of the 1977 Act
  • it follows that a patent could only be applied for and granted to a person, or any other person claiming through them, that had a right to file; being either the inventor (who must be a natural person) or a person acquiring the right to file from the inventor. The Court concluded that an AI system, as it does not qualify as an inventor, cannot transfer the right to file for a patent right in respect of the invention. Dr Thaler's "doctrine of accession" (i.e. supposedly deriving the right to apply for and be granted patents for the inventions because he owned DABUS) was found to be misguided, and did not confer to him the right to apply for and obtain patents for the inventions made by a machine i.e., DABUS 
  • accordingly, Dr Thaler failed to fulfil the requirements set out in section 13(2) of the 1977 Act and the applications must now be taken to have been withdrawn.

Analysis

This judgment maintains the status quo on how the Patent Act 1977 applies. It is in line with other decisions made by courts in the European Union and the United States with respect to inventors. However, it does not deal with the broader issues on whether AI outputs are themselves patentable, and whether a policy decision is required to amend the scope as to who, or what, can be an "inventor" under the Patent Act 1977. For example, should an AI developer be able to apply for patents for inventions made by the AI system they developed/trained as the inventor? Should a human user be entitled to apply for a patent for an invention that was an output from an AI System based on their prompt in the AI system?

In June 2022 the UKIPO concluded, based on responses to its consultation on AI, that the current UK patent rules are sufficient to protect "AI-assisted inventions". Given the huge leaps various AI models have made this year and their potential impact on medical and scientific research, there may be legislative changes to incentivise innovation, causing a shift in the legal landscape as a result.

To learn more about AI & IP, please watch our recent AI webinar on 'Intellectual property and artificial intelligence – a review of new legal challenges'. You can also visit our Artificial Intelligence page on Talking Tech – our global platform for tech content and accessible overviews of hot topics from blockchain and crypto, cyber and AI to IP and Outsourcing.

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