As courts around the world grapple with what the rapid growth of artificial intelligence means for intellectual property rights.
The UK Supreme Court has handed down a judgment, which addresses the issue of whether AI can be the inventor of a patent. The judgment is unambiguous in firmly rejecting the notion, as it relates to current legislation.
As courts around the world grapple with what the rapid growth of artificial intelligence ("AI") means for intellectual property rights, the UK Supreme Court has handed down a judgment which addresses the issue of whether AI can be the inventor of a patent. The judgment is unambiguous in firmly rejecting the notion, as it relates to current legislation.
Background to the Case
The case concerned two patent applications by Dr Thaler, who sought rights over inventions created by an AI machine, DABUS. DABUS uses artificial neural networks to create and evaluate new ideas and is itself subject to patent protection.
In 2019, the Comptroller-General of Patents, Designs and Trademarks rejected the applications on the basis that they did not comply with s.13(2) of the Patents Act 1977 ("Patents Act"), which requires the applicant to identify the person whom they believe to be the inventor. Dr Thaler unsuccessfully appealed this decision to both the High Court and the Court of Appeal. The decisions centred around the reasoning that the Patents Act requires an inventor to be a natural person.
Subsequent to the appeals, but prior to the Supreme Court case, the UK Intellectual Property Office undertook a consultation on the use of intellectual property rights and AI. The consultation concluded that no change was currently needed to UK legislation, with a general sense that AI is not yet advanced enough to create an invention that would qualify for patent protection without human involvement. Within this context, the Supreme Court judgment provides clarity on the issue.
The Issues before the Supreme Court
There were two main questions which the Supreme Court was asked to address in this appeal:
- Does the Patents Act require a human inventor to be named in all applications?
- Where an inventor is an AI machine, is the owner of the AI machine entitled to a patent over inventions created by the machine?
The Supreme Court Judgment
On 20 December 2023, the Supreme Court handed down its judgment, unanimously upholding the earlier decisions to preclude DABUS itself, and alternatively Dr Thaler as DABUS's owner, from being named as the inventor in the patent applications.
The Supreme Court was unequivocal in rejecting Dr Thaler's first submission, concluding that the Patents Act requires that "an inventor must be a person".
The other argument, that Dr Thaler was entitled to a patent over the invention by virtue of being the AI machine's owner was also rejected. The Supreme Court concluded that the Patents Act requires that there is an inventor, and that the inventor is a natural person. If the applicant is not the inventor, they must fall within the exceptions described under s.7(2)(b) and (c) of the Patents Act, which was not the case here.
It was, therefore, held that the Comptroller-General was entitled to decide that the applications failed to satisfy the requirements of the Patents Act.
Comment
The judgment sends a significant message in relation to AI inventorship in the UK. It also aligns with how equivalent cases have been treated in other jurisdictions – e.g., in the United States by the Federal Circuit Court of Appeals in Thaler v Vidal 43 F.4th 1207 (Fed. Cir. 2022).
Yet, it is worth emphasising that the decision is based solely on the interpretation of the Patents Act and not on AI's inventing capabilities more generally. As the Supreme Court recognised, the appeal was not concerned with policy questions of whether technical advances generated by machines acting autonomously and powered by AI should be patentable, nor with whether the term "inventor" in the Patents Act ought to be expanded.
As the use of AI grows exponentially, the judgment raises legitimate questions as to how legislators will deal with the protection of intellectual property that is created by AI in the future. The current UK legislation was brought into force at a time when the concept of a non-human inventor would have been unlikely to have been considered. Although the EU has taken the lead in being the first to propose legislation specifically concerning AI, no doubt other legislatures will be closely watching these developments and may be considering amending their domestic legislation, including in the field of intellectual property law.
This article was co-authored by Catherine Templeton, Paralegal in our Commercial Disputes and Regulation Team
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