Rapid Reaction: UK Supreme Court rules that AI systems cannot be named as an inventor for UK patent applications

What has the Supreme Court decided?

In 2018 Dr Thaler filed two GB patent applications naming the creativity machine "DABUS" as the inventor and stating that he was entitled to apply for the patents by virtue of his ownership of DABUS. The UK Intellectual Property Office (UKIPO) rejected the applications, deeming them withdrawn under section 13(2) of the Patents Act 1977. This section requires an applicant to identify the person believed to be the inventor and indicate the derivation of their right to be granted the patent. This decision was upheld by both the High Court and the Court of Appeal.

Following a one-day hearing in March 2023 the Supreme Court’s judgment today was given by recently retired IP specialist Lord Kitchin (with whom the other Lords agreed). The Court concluded that:

• As a matter of statutory interpretation, an inventor within the meaning of the Patents Act 1977 must be a natural person. DABUS it is not a person, let alone a natural person and it did not devise any relevant invention. As a result, it is not an inventor under the Patents Act.
  
  
• Dr Thaler was not entitled to apply for and obtain a patent in respect of any technical advance made by DABUS. The Patents Act provides a complete code for deciding entitlement to apply for a patent. The starting point of that code (and a fundamental premise of the Patents Act) is that there must be an inventor, and the inventor must be a person. Dr Thaler’s argument that his ownership of DABUS entitled him to apply for the patents under the doctrine of accession was found to be without merit. The doctrine of accession concerns new tangible property produced by existing tangible property and there was no principled basis for applying the doctrine to concepts for new and non-obvious devices and methods that are said by Dr Thaler to be generated autonomously by DABUS.
  
  
• The UKIPO was entitled to treat Dr Thaler’s applications as withdrawn on the basis he had failed to comply with section 13(2) of the Patents Act 1977 by identifying the person who he believed to be the inventor and how he derived his right to apply for the invention. While it was not the function of the UKIPO to investigate the correctness of an apparently genuine statement of fact by the applicant which indicates the derivation of his right to be granted the patent for which the application is made, the UKIPO was not powerless to intervene where that indication was obviously defective or insufficient. Dr Thaler had failed to identify any person who he believed to be the inventor and his claim regarding his entitlement to apply for the patent was also premised on the flawed and legally impossible position that DABUS was the inventor.

When reasoning these conclusions, the Court was keen to stress that the case was not concerned with the broader question of whether technical advances generated by AI should be patentable or whether the term “inventor” ought to be expanded to cover AI. It notes that these questions raise policy issues about the purpose of a patent system which went beyond its job of interpreting the current law.

Analysis and implications

The Supreme Court rejecting the appeal was the more likely result, as accepting it would have required the Court to grapple with complex issues of entitlement to apply for patents covering AI generated inventions.

Dr Thaler’s applications had already been rejected by the UKIPO, the High Court and the Court of Appeal. While a decision to allow the appeal would have had significant implications for filing patents in the UK, the decision by the Supreme Court to reject the appeal maintains the status quo.

In the short term this result is unlikely to cause much disruption for businesses. AI systems are currently being used as tools by human inventors and businesses will not have a problem identifying one or more humans to name as inventors in their patent applications. Businesses can also take some comfort from the fact that their entitlement to apply for patents can only be challenged under the Patents Act by someone who claims that they were entitled to apply for the patent. This would not include an AI system.

There may be scenarios where the use of an AI system in the invention process adds new potential classes of individuals (e.g. AI developers) who might claim to be a (human) inventor. This could lead to conflict if they decide to apply for a patent without the agreement of others involved (e.g. the AI user). This could be resolved by putting in place commercial contracts which assign ownership of inventions, with existing case law covering any gaps.

While the Supreme Court has provided a definitive view on the current law, the longer term issues of whether technical advances generated by AI should be patentable and whether the term “inventor” ought to be expanded to cover AI are something which will need to be addressed by way of legislation. In June 2022 the UKIPO concluded that there was no evidence that UK patent law is currently inappropriate to protect inventions made using AI. Given the rapid advances in AI technology since the summer of 2022, this conclusion may need to be revisited sooner than expected.