Opinion

UK Supreme Court considers whether AI can be an inventor of a patent

Published Date
Mar 6, 2023
Related people
We previously discussed the UK Court of Appeal's judgment in Thaler v Comptroller-General of Patents, Trade Marks and Designs in December 2021 (Court of Appeal Judgment on Machine Inventors). Permission to appeal that judgment to the UK Supreme Court was granted on 12 August 2022 and an oral hearing was held on 02 March 2023.

Important questions of law

On 02 March 2023, the UK Supreme Court heard arguments from representatives of Dr. Stephen Thaler (the owner of the AI machine known as "DABUS") and the Comptroller-General on the following questions of law:

  1. Does section 13(2)(a) of the Patents Act 1977 (the 1977 Act) require a person to be named as the inventor in all cases, including where the applicant believes the invention was created by an AI machine in the absence of a traditional human inventor?
  2. Does the 1977 Act provide for the grant of a patent without a named human inventor?
  3. In the case of an invention made by an AI machine, is the owner, creator and user of that AI machine entitled to the grant of a patent for that invention?

These are important questions because the UK Supreme Court's decision will determine whether an AI machine can constitute an inventor of a patent under UK patent law. This is closely related to the recent UKIPO's consultation into the distinct question of whether patent protection should be available for AI-devised inventions and the potential ramifications of doing so, discussed here: Artificial Intelligence and Intellectual Property: what next for the UK?

History of the proceedings

As set out in our December 2021 blog post, these proceedings arise from two patent applications filed in 2018 by the appellant, Dr. Stephen Thaler. On those patent applications, Dr. Thaler stated that the inventor was an AI machine called DABUS and that he had acquired the right to grant of the patents by virtue of his ownership of DABUS.

On 04 December 2019, the UKIPO rejected Dr. Thaler's patent applications (Decision O/741/19) on the basis that DABUS could not be named as the inventor of a patent because it is not a person, as envisaged by sections 7 and 13 of the 1977 Act. As such, the patent applications were deemed withdrawn.

Dr. Thaler appealed the decision of the UKIPO to the High Court, where his appeal was dismissed by Marcus Smith J on 21 September 2020 ([2020] EWHC 2412 (Pat)).

Dr. Thaler further appealed the decision of the High Court to the Court of Appeal, which we discussed in detail in our previous blog post. Exactly a year after the High Court judgment, the Court of Appeal dismissed the appeal on the basis of statutory interpretation (rather than considering any policy arguments for or against AI inventorship), finding unanimously that an AI machine cannot be named as an inventor of a patent ([2021] EWCA Civ 1374). However, the Court of Appeal was split (Birss LJ dissenting) as to how to correctly process patent applications identifying an AI machine as an inventor and asserting a right to grant of the patent through ownership of that AI machine. 

Supreme Court hearing

On 02 March 2023, the answers to the above questions were argued at an oral hearing before Lords Hodge, Kitchin, Hamblen, Richards and Leggatt, Robert Jehan and Prof. Ryan Abbott on behalf of Dr. Thaler submitted that the Court of Appeal was wrong in holding that there can be no property in an invention and that, as a consequence, Dr. Thaler could not derive his rights to the inventions under s7 of the 1977 Act. They also submitted that the Court of Appeal was wrong to find that s13 of the 1977 Act prevents the grant of a patent where there is no human inventor, because the requirement to "identify the person or persons" believed to be the inventor does not set a requirement that the inventor must be a person. Nor, they argued, was there any such requirement in the 1977 Act, and it was submitted that this position was supported by the jurisprudence of the EPO (which binds the UK in relation to European UK patents).

In response, Dr. Stuart Baran on behalf of the Comptroller-General submitted that, in the absence of an overwhelming policy reason or an ambiguous legislative history, the wording of section 13(2) of the 1977 Act should be given its natural meaning. In short, the Comptroller-General's position was that the requirement to "identify the person or persons" believed to be the inventor means that a person or persons must be identified by the applicant of a patent – and it was submitted that the legislative history supported this view. Dr. Baran also submitted that the Supreme Court was not in a position on the information before it in this case to make a decision on grounds of policy, including because the Court did not have enough information before it to do so. Dr. Baran accepted that there are property rights in inventions, namely, the rights to apply for and be granted a patent, but he submitted that there is no rule of law that allows Dr. Thaler to derive such rights from his AI machine.

During the course of Dr. Thaler's submissions, a number of the Lords asked whether the natural person who created the AI machine (or the person closest to the invention) could be put down as the inventor of inventions created by the AI machine. Mr. Jehan suggested that this would stretch the UK definition of inventor as the "actual deviser" of the invention too far and that would have an impact on other provisions of the 1977 Act. Prof. Abbott also explained that Dr. Thaler did not conceive of the invention in any sense: it was DABUS that realised the inventions autonomously and identified the novelty in those inventions. Therefore, it would not be right to name Dr. Thaler as the inventor, on the basis that it was factually incorrect and that it would result in his wrongful receipt of moral rights. Nevertheless, throughout the hearing, Lord Kitchin appeared to have a lack of sympathy for Dr. Thaler's case, suggesting that the proceedings had arisen from Dr. Thaler's stark decision not to name himself as the inventor. 

During the course of the Comptroller-General's submissions, Lord Kitchin also asked Dr. Baran to confirm that the Comptroller-General would not have objected to the patent applications if Dr. Thaler had listed himself as the inventor on the patent applications. Dr. Baran submitted that it would be in line with EPO approach to name the natural person responsible for the machine as the inventor, and then (if so desired) to state in the specification that an AI machine was used – this, he said, would not be objected to by the Comptroller-General. Dr. Baran submitted that the Comptroller-General does not, and is not empowered to, investigate the truth of the person named as the inventor on the application. Dr. Baran argued that the 1977 Act makes this an inter partes problem: the person vexed can bring a claim if they are entitled to be named inventor. Lord Leggatt noted that if there was no human inventor to bring an inter partes claim then that appeared to be a defect in the system. 

Supreme Court judgment to follow

In a short closing statement, Lord Hodge expressed that the Court was grateful for the submissions and the assistance of the parties' representatives. Lord Hodge recognised the significant challenges to the current law as a result of AI, stating that it was clearly an issue in relation to intellectual property law, as well as contract and tort. This case, he said, was a chance for the Court to consider where the law goes in relation to patents. 

Lord Hodge expressed that careful thought would be given to this decision and noted that a judgment would follow as soon as reasonably practicable. We anticipate a final judgment in these proceedings before October 2023, in light of Lord Kitchin's retirement at the end of September 2023.

 

Content Disclaimer
This content was originally published by Allen & Overy before the A&O Shearman merger