In a highly anticipated decision delivered just before Christmas, the UK Supreme Court has unanimously confirmed in Thaler v Comptroller-General of Patents, Designs and Trademarks [2023] UKSC 49 that an artificial intelligence machine cannot be named as an inventor within the meaning of the UK Patents Act 1977. 

As we have discussed previously, in 2018 Dr Thaler submitted two UK patent applications. These applications were unusual, as the applications disclosed that the inventions were said to have been generated by a machine named DABUS acting autonomously and powered by artificial intelligence. Dr Thaler maintained that he was entitled to make the patent applications as he was the owner of DABUS, and therefore had the right to apply for the patents. These applications were part of a broader project and series of test cases, where Dr Thaler and his collaborators have made parallel patent applications around the world, seeking to establish that AI systems can make inventions, and that the owners of AI systems are entitled to apply for those AI generated inventions.

The Supreme Court held that the scope and meaning of the term "inventor" in the Act did not extend to AI machines such as DABUS. This outcome was perhaps unsurprising, with the Supreme Court noting that Dr Thaler's argument that DABUS was the inventor "has been decided against [him] at every level in these proceedings and by every judge who has considered it". The Supreme Court was also careful to emphasise that the case was not about whether technical advances generated by AI machines should be patentable, but instead was about the correct interpretation and application of the Patents Act. The Supreme Court did however note that the rapid advances in AI technology may make such policy questions even more important. 

Background 

In 2019 the UK IPO refused to accept Dr Thaler's patent applications, on the basis that section 13(2) of the Patents Act 1977 required an applicant to identify the person they believed to be the inventor and, where the applicant was not the inventor themselves, to indicate how they derived their right to be granted the patent from the inventor. As Dr Thaler maintained that there was no person whom he believed to be an inventor, as the invention was "entirely and solely conceived by DABUS", he argued that DABUS must be named as the inventor. The UK IPO Hearing Officer decided that DABUS was not a person, and therefore not an inventor. As a result, the Hearing Officer concluded that DABUS had no rights that could be transferred to Dr Thaler, and that Dr Thaler was not entitled to the grant of a patent, even if he owned the AI machine.

In 2020, the High Court rejected Dr Thaler's appeal and upheld the UK IPO's decision. The court concluded that section 7(2) of the Patents Act 1977 set out an exclusive list of classes to whom a patent may be granted, being "primarily to the inventor or joint inventors" or to any person who had acquired the right from an inventor though a transfer of property. The Court concluded that an inventor must be a person and must be capable of holding and transferring property. As DABUS was not a person and it was not a human, it was not an inventor. Furthermore, as DABUS lacked legal personality it could not own or transfer property. Dr Thaler was therefore not entitled to apply for the patents, as DABUS was not an inventor, and in any event could not transfer any property to Dr Thaler. 

In 2021, the Court of Appeal also rejected Thaler's appeal, with all three Lord Justices in agreement with the High Court's interpretation of section 7(2) PA 1977 and the requirement that an inventor must be a person. However, opinion was split on the operation of section 13 PA 1977. Birss LJ was of the dissenting minority view that Thaler's subjective belief that DABUS was the inventor was sufficient to enable him to apply for a patent, arguing the purpose of section 13(2) PA 1977 was not to identity the "factual correctness" of the inventor's identity but merely to simplify the patent application procedure.

The appeal to the Supreme Court

Lord Kitchin, writing for a unanimous Supreme Court considered that the appeal turned on three issues:

1. The scope and meaning of "inventor" in the Patents Act 1977;
2. If DABUS was not an inventor, was Dr Thaler nevertheless the owner of any invention in any technical advance made by DABUS and entitled to apply for and obtain a patent in respect of it?; and
3. Was the Hearing Officer entitled to hold that the applications would be taken to be withdrawn for a failure to satisfy the requirements of section 13 Patents Act 1977.

1. What is the scope and meaning of "inventor"?

The Supreme Court held that an inventor within the meaning of the Patents Act meant the actual deviser of an invention and that they must be a natural person. The Court reached this conclusion from an examination of the structure and content of sections 7 and 13 of the Act, read on their own and in the context of the Act as a whole. This approach was also consistent with the earlier House of Lords decision in Yeda Research v Rhone Poulenc Rorer [2007] UKHL 43, where Lord Hoffmann explained that an inventor as defined in the Act is the natural person who came up with the inventive concept. 

In relation to Dr Thaler's appeal, the Supreme Court therefore concluded "[DABUS] is not a person, let alone a natural person and it did not devise any relevant invention. Accordingly, it is not and never was an "inventor" for the purposes of section 7 or 13 of the 1977 Act". 

2. If DABUS was not an inventor, was Dr Thaler nevertheless the owner of any invention in any technical advance made by DABUS and entitled to apply for and obtain a patent in respect of it?

Dr Thaler contended that even if DABUS was not an inventor, he would still be entitled to apply for and obtain a patent based on his ownership of DABUS. The Supreme Court considered that section 7 of the Patents Act sets out a complete statutory code for determining who has the right to apply for and obtain a patent, and that neither DABUS nor Dr Thaler fell within that code as a person entitled to apply for a patent. 

Dr Thaler argued he should be entitled to file the application for a patent by analogy with or upon the doctrine of accession. That doctrine assists in determining ownership where new tangible property is produced by existing tangible property - for example, under the doctrine, the first owner of a new-born lamb will be the farmer who owns its mother. By analogy, Dr Thaler argued that as the owner of DABUS, he should be the owner of any technical advance made by the AI machine. The Supreme Court agreed with the approach of Lord Justice Arnold in the Court of Appeal, who held the doctrine of accession clearly did not apply to a new intangible produced by existing tangible property. The Supreme Court held Dr Thaler's argument mischaracterised an invention as being tangible property, and that there was no basis for applying the doctrine of accession in these circumstances. As a result, Dr Thaler was not entitled to apply for a patent in relation to any technical advance made by DABUS.

3. Was the Hearing Officer entitled to hold that the applications would be taken to be withdrawn for a failure to satisfy the requirements of section 13 of the Patents Act 1977?

The final issue for the Court was whether the Hearing Officer was entitled to hold that Dr Thaler's patent applications would be withdrawn for a failure to satisfy section 13 of the Patents Act. Here the Supreme Court noted that section 13 includes a requirement that an applicant for a patent identify the person they believe to be the inventor of the invention described in the application, but that Dr Thaler did not identify any person at all. Furthermore, Dr Thaler additionally failed to indicate how he had derived his right to be granted the patent. While Dr Thaler asserted that he was the owner of DABUS, this was not sufficient to establish a right to apply for a patent. The Supreme Court held that as an inevitable consequence the patent applications had to be considered withdrawn. 

In addressing this point, the Supreme Court emphasised that it is not the role of the UK IPO to investigate the correctness of an apparently genuinely statement by a patent applicant of inventorship or which indicates the derivation of their right to be granted the patent, but that the UK IPO did have the power to intervene where the indication of derivation is obviously defective or insufficient. In other words, if Dr Thaler had listed himself as the human inventor of the inventions the UK IPO would not have been required to investigate the circumstances of the invention and whether the statement was true. Indeed, earlier in the decision the Court noted that it "has never been Dr Thaler's case that he was the inventor and used DABUS as a highly sophisticated tool. Had he done so, the outcome of these proceedings might well have been different".

Significance of the decision

This decision is clear that an artificial intelligence machine cannot currently be named as an 'inventor' within the meaning of the UK Patents Act 1977. The Supreme Court confirmed that for patents to be granted for inventions made by AI machine, it would be necessary for the Patents Act 1977 to be amended. 

In a statement after the Judgment was released, one of Dr Thaler's representatives argued "It is now up to Parliament to change the law to allow AI-generated inventions to be protected and to make the UK a favourable jurisdiction for the use and development of AI in research and development." As discussed in our previous blog post on this case, last year's Government response to the IPO 'Consultation on Artificial Intelligence and Intellectual Property', stated that there are no current plans to change UK patent law to expand the protection available to AI inventions. As respondents to that IPO consultation noted, a unilateral change to UK patent law to permit AI inventors may be premature and might prejudice international patent filings in the absence of international harmonisation. This recent decision, coupled with the explosive growth in the use of AI across the economy, is likely to renew calls for international attention to be given to the issue of AI inventorship.