AI cannot be an inventor under UK patent law, rules Supreme Court

The UK’s highest court reiterated the views expressed by lower courts in the country, that UK patent law as it stands does not provide for AI inventorship – only a human can be named as the inventor on a patent application in the UK.

The ruling (25-page / 287KB PDF) went against Dr. Stephen Thaler who was seeking to patent inventions that he claims were derived from an AI machine called 'DABUS'. He believes the owner of AI systems should be the default owner of patents for inventions derived from those systems, and that it should be possible to name those AI systems as inventors on patent applications. However, the UK Intellectual Property Office (UK IPO) disagreed, and its findings have subsequently been upheld by the High Court and Court of Appeal in London – albeit on a split basis in the appeal court – and now the Supreme Court too.

Thaler’s case has been litigated in various major patent jurisdictions, including the European Patent Office (EPO), the US and Australia. The UK Supreme Court was the first supreme-level court in the world to hear Thaler’s arguments and consider the issues, however.

In its ruling, the Supreme Court confirmed that Thaler’s appeal raised only limited questions of law – not the broader questions of whether AI-derived inventions are patentable or whether the term “inventor” needs to be broadened to include machines which generate new or non-obvious products.

On the first of the three issues on appeal, the court found that UK patent law could only be interpreted in one way: “An inventor within the meaning of the 1977 Act must be a natural person, and DABUS is not a person at all, let alone a natural person: it is a machine and on the factual assumption underpinning these proceedings, created or generated the technical advances disclosed in the applications on its own.”

On the second issue, the court ruled that Thaler was not entitled to apply for and obtain a patent in respect of any technical advance made by DABUS and described in the patent applications.

It said: “Section 7 [of the Patents Act 1977] does not confer on any person a right to obtain a patent for any new product or process created or generated autonomously by a machine, such as DABUS, let alone a person who claims that right purely on the basis of ownership of the machine.”

The court rejected Thaler’s claim that his situation was analogous to that of a business owning patents for inventions developed by their employees, which the legislation does provide for.

The Supreme Court also concluded that the hearing officer at the UKIPO that handled Thaler’s patent applications was entitled to hold that Thaler’s applications would be taken to be withdrawn in the event he failed to specify a natural person as the inventor in the application form.

Patent law expert Mark Marfe of Pinsent Masons said: “In giving the lead judgment, Lord Kitchin confirmed the lower courts’ positions that this case concerned the proper interpretation of sections 7 and 13 of the Patents Act. This case, he said, is not one concerned with the broader question of patentability of AI nor with whether the term ‘inventor’ ought to be expanded to cover AI systems.”

However, Marfe did note that Lord Kitchin had observed that these broader questions do raise policy issues, such as incentivising technical innovation, that Lord Kitchin opined are now even more important than when the Thaler patent applications were filed owing to the rapid advances in AI that have taken place since then.

Marfe said: “I anticipate that whether the current law is fit for purpose will be revisited again before too long – the government having decided against changing UK patent law to account for AI-devised inventions in 2022, following a consultation exercise. For example, in the context of future cases an AI may be named as a co-inventor. However, if the law is not aligned on an international basis, it will negatively impact companies with global patent strategies. While legislative change is possible, progress needs to be based around international harmonisation. Companies will be concerned if there is divergence in these types of decisions, which creates uncertainty and, in turn, negatively impacts innovation”.

Patent attorney Harry Muttock, also of Pinsent Masons, said: “The ruling does leave open the question of patentability in cases where AI is used as a tool which assists a natural-person inventor. Indeed, the Supreme Court said that had it been Thaler’s case that he was the inventor and had used DABUS as a ‘highly sophisticated tool’ of assistance, the case may have had a different outcome.”