Opinion

UK decides AI cannot be named an inventor of a patent

Published Date
Dec 21, 2023
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Robert Dickens, of our London IP Litigation Practice, discusses the UK Supreme Court ruling in the DABUS case and its practical implications.

The UK Supreme Court has ruled that AI machines cannot be named inventors of patents. The case therefore brings to an end Dr Thaler’s attempts to register a UK patent with his ‘DABUS’ AI as the named inventor. However, the UK Supreme Court decision does not concern the wider issue of whether inventions generated by AI systems are patentable under UK law. The decision therefore gives no reason to think that a patent application in respect of a patentable invention generated by AI will not be granted, provided that an AI machine is not named as the inventor.

The Issues

The UK Supreme Court decision concerns the following questions of law:

  1. Whether section 13(2)(a) of the Patents Act 1977 (the 1977 Act) requires 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. Whether the 1977 Act provides for the grant of a patent without a named human inventor?
  3. Whether, in the case of an invention made by an AI machine, the owner, creator and user of that AI machine is entitled to the grant of a patent for that invention?

The Key Facts

To recap, the key facts of this case are:

  • In 2018, Dr Stephen Thaler filed two patent applications for inventions which did not designate a human inventor. Instead, the applications named an autonomous AI machine (known as DABUS). For the purposes of these proceedings, it was assumed that the inventions were otherwise patentable.
  • As part of the application process, Dr Thaler claimed that: (i) the inventions were solely and entirely conceived by DABUS; and (ii) he had the right to apply for patents in respect of those inventions as DABUS’s owner.
  • The UKIPO rejected Dr Thaler’s applications because: (i) DABUS did not qualify as an inventor under the 1977 Act; (ii) Dr Thaler was not entitled to apply for patents for inventions created by DABUS; and (iii) the applications were defective because Dr Thaler failed to identify any person whom he believed to be the inventor and failed to indicate how he derived the right to be granted the patents.

The UKIPO, High Court and Court of Appeal each found against Dr Thaler. Our previous blog posts1 provide the full procedural history and legislative context, as well as a summary of the UK Supreme Court hearing in March 2023.

The Key Arguments

On appeal to the Supreme Court, Dr Thaler argued that:

  • the owner of an AI machine is entitled to inventions created by the machine, and to apply for patents for those inventions;
  • an applicant for such a patent is not required to name a natural person as an inventor;
  • he had satisfied section 13(2) of the 1977 Act; and
  • in any event, the applications had been refused improperly.

The Comptroller argued that: 

  • for the purposes of the 1977 Act, the inventor must be a natural person, Dr Thaler did not satisfy section 13(2) of the 1977 Act because he did not identify a person whom he believed to be an inventor and, therefore, the applications were properly withdrawn; and
  • further, Dr Thaler was not within one of the classes of persons to whom a patent for the inventions in the applications could be granted.

What the Supreme Court ruling is not

The UK Supreme Court ruling is not concerned with the wider issue of whether inventions generated by AI systems should be patentable under UK law. For the policy considerations on this, see the outcome of the UK’s consultation on patent protection for AI-devised inventions in our previous post: Artificial Intelligence and Intellectual Property: what next for the UK?

The UK Supreme Court judgment

The meaning of “inventor”: the UK Supreme Court held that the structure and content of the 1977 Act, alone and in context, permitted only one interpretation: an inventor within the meaning of the 1977 Act must be a natural person. As such, the Comptroller was right to decide that: (i) DABUS is not and was not an inventor because DABUS is not a person, let alone a natural person; and (ii) it did not devise any relevant invention. In addition to sections 7 and 13 of the 1977 Act, the UK Supreme Court found support for its decision in the broader context of sections 2(4), 8 and 37.

Dr Thaler as owner and applicant: the UK Supreme Court held that section 7 of the 1977 Act does not confer on any person a right to obtain a patent for any invention generated autonomously by a machine, such as DABUS, let alone a person who claims that right based purely on their ownership of that machine. 

Further, the UK Supreme Court held that Dr Thaler had not identified any basis in law on which he acquired such a right through his ownership of DABUS. As such, it followed that Dr Thaler had never had any right to secure the grant to himself of the patents in respect of the claimed inventions.

The withdrawn applications: the UK Supreme Court held that the UKIPO was plainly entitled to withdraw the applications because: (i) DABUS was not legally capable of being an inventor within the meaning of the 1977 Act and (ii) Dr Thaler had not established that he was entitled to apply for and obtain patents in relation to DABUS’s inventions merely as a result of his ownership of DABUS.

What does this mean in practice?

If an applicant fails to file a statement identifying the person or persons whom the applicant believes to be the inventor or inventors (and, if the applicant is not the inventor, they do not indicate the derivation of their right to be granted the patent), then their patent application will be withdrawn. This is not new law, but an application of the existing law to a new situation.

It was never Dr Thaler’s case that he was the inventor and used DABUS as a highly sophisticated tool. If Dr Thaler had argued this, the outcome would likely have been different. This is because, even if naming Dr Thaler as an inventor was “incorrect”, the UKIPO is not required to investigate the correctness of an apparently genuine statement of fact, and it does not have the resources to investigate every claim made by an applicant.

As such, from a practical perspective, provided that an AI machine is not named as the inventor of an otherwise patentable invention generated by AI, then there is no reason to think that the UKIPO will not grant a patent in respect of that invention. Indeed, to the extent an applicant may wish to mention the involvement of an AI machine anywhere else on the application form, this appears unlikely to cause any difficulties unless doing so results in the application being obviously defective or insufficient.

The UK Supreme Court judgment is available here: Thaler v Comptroller-General of Patents, Designs and Trade Marks [2023] UKSC 49.

 

Footnotes

1. Previous blog posts: UK Supreme Court considers whether AI can be an inventor of a patent (March 2023), Court of Appeal Judgment on Machine Inventors (December 2021)

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