UK Supreme Court rejects AI as “inventor” under the Patents Act

The question

What is the scope and meaning of “inventor” in the UK’s patent framework, and will it accept an AI machine as being the sole inventor?

The key takeaway

Patent applications to the UK Intellectual Property Office (UK IPO) must name a human inventor, even when significantly assisted by AI technology. The Patents Act 1977 will not be interpreted to accept that AI-machines can independently be the named inventor to meet this requirement.

The background

On 20 December 2023, the UK Supreme Court delivered its judgement in Thaler v Comptroller-General of Patents, Designs and Trademarks. The case concerns two patent applications submitted by Dr Stephen Thaler, for a food container and a flashing light, to the UK IPO in 2018. In his patent application, Thaler attributed the inventions to an AI machine that he owned, named “DABUS”. The UKIPO had previously rejected the applications, citing the lack of a human inventor and the inability of an AI machine to hold property rights.

Thaler appealed this decision in the High Court and the Court of Appeal, but both appeals were dismissed. The case was then heard by the Supreme Court, with the primary issue centring on the Court’s interpretation of “inventor” under s13(2) of the Patents Act 1977, and how such interpretation would impact on whether a patent application’s named inventor could be an AI machine such as DABUS. A second issue arose as to whether the owner of that machine would then be entitled to the patent, despite not being the named inventor.

The development

The key takeaways from the Supreme Court’s judgement are:

• the meaning of “inventor” under the Patents Act 1977 must be a natural person and a patent application must be made through this inventor;
• an AI machine like DABUS is not considered a person, natural or legal, and therefore could not be named as the inventor in a patent application;
• being the owner of a machine that created an invention does not entitle the owner to a patent for that invention. There is a limited set of circumstances in which a person other than the inventor can be granted a patent (such as being the employer of the inventor), however machine ownership is not one of these.

The Court did, however, leave open the possibility for applications to be submitted where a natural person merely used the AI as a tool in their invention, but still named themselves as the inventor.

Why is this important?

Despite the rapid advances of AI, there remained before this case an ambiguity on its recognised status as a potential inventor within intellectual property law. A similar issue is set to be considered in a further case heading to the Court of Appeal, Emotional Perception AI Ltd v Comptroller General, in relation to whether AI inventions fall under the statutory exclusion for patentability for computer programs.

The ruling in Thaler aligns the UK’s position on AI-generated inventions with the decisions of US, European, Australian and Canadian courts in response to analogous applications, cementing a global position that autonomous AI cannot be recognised as an independent inventor. However, as AI technology becomes more sophisticated and requires less human input, the challenge of protecting the intangible assets it creates without an obvious human inventor will arise more frequently. The gaps emerging in the UK’s intellectual property framework as a result highlight that legislative developments will likely be required in the near future, and it will be interesting to see what stance is taken by policy makers.

Any practical tips?

Any patent applications submitted to the UK IPO require a named human inventor. Therefore, businesses investing in AI-generated technologies and products should still emphasise the role of any human input in their patent applications, ensuring that a human can still be named as its inventor. In this case, Dr Thaler was insistent on naming his AI machine as the inventor in order to set a new precedent, but the Court openly recognised that “the outcome of these proceedings might well have been different” had he named himself as the inventor that simply used AI as a sophisticated tool.

Spring 2024