In her inaugural blog for Scintilla Insights, UK and European Attorney, Elly Meyers, walks us through the recent case regarding whether or not an AI machine can be listed as an inventor on a patent application.

BACKGROUND

In 2018, two patent applications were filed in the UK (as well as elsewhere around the world) naming an AI machine called “DABUS” as the inventor.

DABUS is owned and was made by Dr Stephen Thaler, who was named as the applicant. In 2019, the UKIPO refused to proceed with the applications, deeming them withdrawn, on the basis that in accordance with the UK Patents Act, only a human person could be named as an inventor and that DABUS is not a person.

Dr. Thaler has consistently argued that he had named an inventor who he believed had devised the invention, in accordance with the Act, and that his right to be named as applicant was derived from his status as the owner of DABUS.

In September 2020, an appeal was heard by the High Court, wherein Dr Thaler contended that the UKIPO were wrong to deem the applications withdrawn, but where it was ultimately decided that the applications should be treated as withdrawn for failing to identify a person as the inventor.

Next, in September 2021, the case was taken to the Court of Appeal, where it was again decided that the application should be treated as withdrawn for failing to identify a person as inventor, as well as, separately, for failing to indicate how rights to the patent had been derived – Thaler could not derive his right to the patent merely from the fact of his ownership of DABUS and must instead follow the definitions set out by the Act[1].

UK SUPREME COURT VERDICT

Late last year, the UK Supreme Court upheld the earlier decisions of the High Court and the Court of Appeal, deciding that DABUS could not be named as inventor because it is not a person (legal or natural); that Dr Thaler was not entitled to file the applications for and obtain the grant of patents on the basis of his ownership of DABUS; and that the UKIPO was entitled to deem the applications as withdrawn.

The judgement clarifies what the core questions of the case have been. Rather than asking whether or not an AI can invent, or whether the definition of an inventor within the current system should be expanded, the case is about whether the provisions of the Act were correctly applied and interpreted in the applications in question – that is, can DABUS be considered an inventor within the UK Patents Act?

The answer to that question being no:

the Act requires that the inventor be a person, which DABUS is not and has never been contended to be, and therefore, no right to a patent can be granted to Dr Thaler, claiming through DABUS as named inventor, because DABUS cannot hold rights that could be transferred.

CONCLUSION

In a conclusion, given the potential impact of this case, this UK Supreme Court verdict sets out that an AI machine cannot be named as an inventor, not because of any philosophical considerations related to AI, but rather because the UK Patents Act includes specific definitions which an AI machine cannot legally fit because it does not have legal personality.

The question of whether the patents act should be amended or not to expand the definition of inventor has been neatly dodged by focusing on failings in procedural aspects. However, this will not be the last case of an invention generated by an AI machine and, although it would be possible for the owner of said AI machine to simply name themselves as inventor for the time being (because, after all, the UKIPO do not verify the identity of named inventors[2] – the Act is worded specifically such that inventors and derivation of rights are indicated, rather than established[3]), this would also contravene the Act, which specifies that the “inventor” is the actual deviser of the invention[4].

As such, although the judgement has expressly avoided answering questions related to whether an AI can be an inventor, the questions nevertheless remain and, it is the view of this author, they will need to be answered in the near future.

 

[1] The Patents Act 1977, Section 7(2)

[2] Thaler v Comptroller-General of Patents, Designs and Trade Marks [2023] UKSC 49, paragraph 38

[3] The Patents Act 1977, Section 13(2)

[4] The Patents Act 1977, Section 7(3)

 

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