After four years of legal proceedings the UK Supreme Court has now finally settled the question of whether an AI system can be an inventor on a UK patent. In Thaler v Comptroller-General of Patents, Designs and Trade Marks  UKSC 49, the court decided that a patent application which names an AI system as the inventor cannot proceed.
Two UK patent applications were made by Dr Stephen Thaler. One was for a new kind of food or beverage container, and the other was for a new kind of light beacon and a new way of attracting attention in an emergency. In each case, Dr Thaler stated that the relevant invention had been devised by an AI system called DABUS, which he owned.
Dr Thaler’s case was that DABUS was the inventor of each invention, and that he was entitled to be granted the patents as the owner of DABUS. His application was taken by the hearing officer of the Comptroller-General of Patents to have been withdrawn under s13.2 of the Patents Act 1977. Dr Thaler lost his appeals to the High Court and Court of Appeal (the latter by a 2:1 majority), and finally appealed to the Supreme Court. Its decision was unanimous.
The Supreme Court had to consider whether an AI system can be named as the inventor of a patent for the purposes of sections 7 and 13 of the Act. The court further considered whether it would follow that Dr Thaler would own a patent invented by a machine which he owned.
In the UK any person can apply for a patent regardless of their connection with the inventor, but the patent can only be granted to a limited list of persons, all of whom derive their right through the inventor. For example, the inventor may be an employee who has made the invention in the normal course of their employment duties, in which case the patent can be granted to the employer. Alternatively, the inventor or their employer may have assigned the rights in the invention to another company, which would then have a superior right to have the patent granted to it.
However, the court found that the Patents Act does not envisage any situation in which the inventor is not a natural person – ie a human being. It was common ground that DABUS was a machine and did not have legal personality – Dr Thaler had never asserted that DABUS was a legal person, let alone a natural person. Therefore, DABUS could not be validly identified as the inventor in a patent application.
Under s13.2 of the Act, a patent application that fails to name the inventor will be taken to be withdrawn. The applicant must identify the person whom they believe to be the inventor, and indicate the reason they are entitled to apply for the patent. As the court observed, the bar is relatively low – the applicant is not required to prove who the inventor is nor the basis of their right to apply for the patent. The Patent Office does not have the resources to investigate every assertion made by an applicant.
Nevertheless, the fact that Dr Thaler had an ‘honest belief’ that DABUS was the inventor was not sufficient to meet the requirements of s13.2. The information provided by an applicant will not be sufficient if it is ‘of no practical use’. Therefore, the hearing officer was entitled to treat Dr Thaler’s applications as being withdrawn under s13.2.
The court noted that the outcome might well have been different if Dr Thaler had identified himself as the inventor of the patents, and had treated DABUS as a very sophisticated tool. However, this was not Dr Thaler’s case. The court noted that it had never been investigated whether or not DABUS had in fact devised the relevant inventions – the application and the hearings had been dealt with on the basis that Dr Thaler’s assertions were factually correct.
DABUS is not a legal person and cannot own any property, including a patent. If DABUS could be named as an inventor, would it follow that Dr Thaler would be entitled to the grant of patent for the relevant invention, on the basis that he owned the machine that invented it? He argued that the court should apply the doctrine of accession.
This is usually applied in cases of tangible property – the court used the example of a cow giving birth to a calf, which will be owned by the owner of the cow. However, the court found that it was not possible to apply this reasoning directly to the facts and that Dr Thaler’s reliance on the doctrine of accession was ‘misguided’. Dr Thaler’s applications did not show that he had any right to be granted the patents.
The court noted that the applications formed part of a series of applications made by Dr Thaler to various patent offices in different jurisdictions, seeking for DABUS to be recognised as the inventor on a number of patents. Ultimately, however, the current statutory framework for granting patents was not devised with artificial intelligence in mind. Unless Parliament amends the Act to allow for an ‘inventor’ to be anything other than a natural person, an AI system cannot be named as the inventor of a patent.
This article was co-written with Clemency Pleming, associate in the IP, IT and commercial team.