The UK Supreme Court Rules on AI Inventors

Introduction:

In a landmark decision by the UK Supreme Court on 20 December 2023, artificial intelligence (‘AI’) systems cannot be identified as inventors in UK patent applications. This ruling, with implications for the evolving landscape of AI-generated inventions, adds clarity to the intricate intersection of AI technology and patent law.

Sections 7 and 13 of the UK Patents Act 1977:

Central to the decision is Section 7 UK Patents Act 1977 (‘UKPA’), which delineates the right to apply for and obtain a patent and the conditions under which a person can be mentioned as an inventor. This legal framework forms the foundation for understanding the recent judgments and their implications for AI-generated inventions.

Section 7 of the UKPA, states that:

Right to apply for and obtain a patent and be mentioned as inventor:

(1) Any person may make an application for a patent either alone or jointly with another.

(2) A patent for an invention may be granted–

• (a) primarily to the inventor or joint inventors;
• (b) in preference to the foregoing, to any person or persons who, by virtue of any enactment or rule of law, or any foreign law or treaty or international convention, or by virtue of an enforceable term of any agreement entered into with the inventor before the making of the invention, was or were at the time of the making of the invention entitled to the whole of the property in it (other than equitable interests) in the United Kingdom;
• (c) in any event, to the successor or successors in title of any person or persons mentioned in paragraph (a) or (b) above or any person so mentioned and the successor or successors in title of another person so mentioned; and to no other person.

(3) In this Act “inventor” in relation to an invention means the actual deviser of the invention and “joint inventor” shall be construed accordingly.

(4) Except so far as the contrary is established, a person who makes an application for a patent shall be taken to be the person who is entitled under subsection (2) above to be granted a patent and two or more persons who make such an application jointly shall be taken to be the persons so entitled.

Section 13(2) UKPA – Mention of inventor, also states that:

(2) Unless he has already given the Patent Office the information hereinafter mentioned, an applicant for a patent shall within the prescribed period file with the Patent Office a statement—

(a) identifying the person or persons whom he believes to be the inventor or inventors; and

(b) where the applicant is not the sole inventor or the applicants are not the joint inventors, indicating the derivation of his or their right to be granted the patent; and, if he fails to do so, the application shall be taken to be withdrawn.

Thaler v Comptroller-General of Patents, Designs, and Trade Marks: A Disputed Claim:

The case at the heart of this legal discourse is Thaler v Comptroller-General of Patents, Designs, and Trade Marks.

Technologist Dr. Stephen Thaler – referred to by The Economist as – “The inventor who fell in love with his AI” – sought to register two patents for inventions created by his AI system, DABUS, including a food container and a flashing light.

Dr. Thaler stated that the inventor for each patent application DABUS, acting autonomously and powered by AI. Dr. Thaler also stated that he was not the inventor himself, but believed he had acquired the right to the grant of the patents through his ownership of his machine – DABUS.

On 4 December 2019, the UKIPO rejected the patent applications, with the Comptroller handing down a decision that “refused to accept the designations of DABUS as the inventor in the Applications pursuant to section 13(2) of the 1977 Act on the ground that DABUS is not a person, as envisaged by sections 7 and 13 UKPA.

Dr Thaler’s appeal of the respondent’s decision was dismissed in the High Court and the Court of Appeal, and the case proceeded to the Supreme Court” [1].

The UK Supreme Court’s Verdict:

The Nature of an Inventor According to Section 7 UKPA:

The UK Supreme Court, in its unanimous decision, emphasized that, according to Section 7 of the UK Patents Act, “an inventor must be a natural person“ . This conclusion rests on the provisions of the UKPA related to the inventor and the owner of the patent. According to the UK Supreme Court decision, DABUS – being a machine, does not meet the legal criteria for inventorship.

Ownership and Patent Application Under Section 7 UKPA:

Dr. Thaler argued that, as the owner of DABUS, he was entitled to apply for the patent applications. However, the court rejected this argument, asserting that ownership of the inventor is not recognised as a basis for claiming the right to apply for a patent under the UKPA.

Dr. Thaler’s Right to Apply for a Patent:

Dr Thaler made it clear that he isn’t the inventor, and that the inventions described in the applications were made by DABUS, and further that he believed his right to the grant of patents for those inventions arose from his ownership of DABUS.

Section 7 UKPA confers the right to apply for a patent and requires there to be an inventor – and the inventor must be a person, which DABUS is not. Therefore, if the applicant is not the inventor, then the applicant must be a person falling within one of either s.7(2)(b) or s.7(2)(c) UKPA – which Dr. Thaler does not and cannot, because DABUS is not an inventor/natural person.

The Doctrine of Accession and AI’s Role in Invention:

Dr. Thaler relied on the doctrine of accession, contending that he could apply for a patent as ‘the owner’ of the AI system.

The court dismissed this, clarifying that the doctrine applies only to ‘tangible property created out of another tangible property’ and does not extend to inventions generated by machines.

Implications for AI-generated Inventions:

The court’s decision may have narrowly interpreted the current legal framework, emphasizing that AI, such as DABUS, can be considered a tool rather than an inventor. This may have immediate implications for patent applications involving AI-generated inventions, requiring that ‘natural persons’ be named as inventors. Further, the decision raises questions about the evolving role of AI in the inventive process.

While acknowledging that the law may need to adapt to advancements in AI, the UK government, in public consultations, has expressed the view that international harmonization on AI inventorship should precede changes to national patent laws.

Naming Inventors:

In the December 2023 issue of the CIPA Journal, an article discussed whether the mandatory requirement to name inventors in UK patents could be removed altogether. It was proposed that there could instead be a requirement to name an inventor only if they assert their right to be mentioned under Art. 4ter of the Paris Convention. The reasons given are that:

• GDPR is designed to safeguard personal information and yet in somewhat contradiction, UK Patent law requires inventors to explain their reasons for wanting privacy and not be named; and
• inventorship is only really significant when disputes arise, so naming inventors could be seen as really only serving the purpose of generating patents with potentials to become “disputes waiting to happen”.

If the mandatory requirement to name inventors in UK patent applications was removed and the default position was shifted to one where inventors were only named if they wished to be named, then how would this affect DABUS?

An invention devised by AI could in theory form the basis of a patent application as there would be no requirement to name the inventor and therefore no way of establishing whether the invention was actually devised by a natural person.

There are likely to be interesting developments in this field as we see AI and machines being integrated further in research and development and devising of inventive concepts for patent applications.

Conclusion:

The UK Supreme Court’s decision on DABUS provides crucial insights into the intricate legal considerations surrounding AI-generated inventions.

As technology continues to advance, the legal landscape must evolve to strike a balance between innovation and established frameworks, ensuring a fair and effective patent system. This decision marks a pivotal moment in this ongoing dialogue.

It is likely that discussions surrounding the appropriate methods for safeguarding AI-generated inventions will only increase in the foreseeable future. Legislatures in the international community may be actively exploring these concerns, observing approaches taken by various jurisdictions, as they navigate the challenge of accommodating diverse interests and firmly held perspectives.

With regard to AI being named as an inventor on a patent application – the answer is no – and AI will not be upgraded in its status from artificial to “artifactual” genius.

The UK legal system has decided this based on the simple fact that, a machine is not a person and cannot be a named inventor – and where the machine is capable of inventive results, then that does not give the owner the right to the grant of a patent by way of his ownership of the machine because the machine still cannot be considered to be an inventor/natural person.

[1] The Supreme Court – Case Details – https://www.supremecourt.uk/cases/uksc-2021-0201.html