UK Supreme Court confirms that AI cannot be an inventor for UK patent purposes

Shortly before Christmas, in one of the most highly anticipated decisions of 2023, the UK Supreme Court confirmed that AI cannot be an inventor for UK patent purposes.

Background and appeal to the Supreme Court

In 2018, Dr Thaler filed two UK patent applications. One related to an invention for a new type of food and beverage container; the other was for a new type of light beacon and way of attracting attention in an emergency. Dr Thaler claimed that each of these inventions was created by an AI machine known as “DABUS” and DABUS was listed as the inventor on each application. Dr Thaler claimed that he was entitled to make the applications, and be granted any resulting patents, on the basis that he owned the DABUS machine.

The Hearing Officer of the Comptroller-General of Patents found that neither of Dr Thaler’s patent applications complied with the Patents Act 1977 (the “UK Patents Act”) and so both applications were taken to have been withdrawn. According to the Hearing Officer, DABUS was not a “person” within the meaning of the UK Patents Act and so could not be an inventor for UK patent purposes; no rights arose that could be transferred from DABUS to Dr Thaler; and Dr Thaler was not entitled to the grant of a UK patent through his ownership of DABUS.

The Hearing Officer’s decision was confirmed by the High Court and, later, by the Court of Appeal. But importantly, whilst agreeing that AI cannot be an inventor for UK patent purposes, Birss LJ (who gave the leading judgment) disagreed with Laing and Arnold LJJ about what that meant for how the applications should have been dealt with by the UKIPO. In Birss LJ’s opinion, there was no basis for deeming the applications to have been withdrawn.

As might have been expected with such a split decision, Dr Thaler appealed to the UK Supreme Court. And there were three key questions that the Court had to consider. All three related to very specific questions of how particular provisions of the UK Patents Act should be interpreted and applied to Dr Thaler’s applications. 

Before getting into those, however, it is important to be clear what this case was not about. It wasn’t about the broader question of whether inventions generated solely by AI should be patentable; nor was it about whether the definition of “inventor” should be expanded to include AI machines – both of those are questions of policy for Parliament, not the courts, to consider. 

Can AI be an inventor for the purposes of the UK Patents Act?

The first question the Supreme Court looked at was whether AI can be an inventor for the purposes of the UK Patents Act. And it concluded, very firmly, that it could not. An inventor must be a natural person. DABUS is not a person (let alone a natural person) and cannot therefore be an inventor for the purposes of UK patent law.

Was Dr Thaler nevertheless the owner of any invention in any technical advance made by DABUS and entitled to apply for and obtain a patent in respect of it?

The rules on who may apply for and be granted a UK patent are set out in section 7 of the UK Patents Act - any person may apply for a UK patent, but it can only be granted to the inventor or certain people claiming through them. 

Dr Thaler sought to argue that he derived title to the inventions by operation of a rule of law (the doctrine of accession) that met the requirements of s.7(2)(b) of the UK Patents Act and that this gave him the right to apply for and be granted UK patents for those inventions. However, the Supreme Court disagreed for two fundamental reasons. Firstly, Dr Thaler’s submissions assumed that DABUS could be an inventor, which the Court had already found it could not. So there was no relevant “inventor” through whom Dr Thaler could claim entitlement. Secondly, the Court found that Dr Thaler’s arguments mischaracterised rights in inventions as being tangible property whose title could be passed on to others. Instead, what we mean when we talk about a “right in an invention” is the right to apply for a patent covering that invention. And the Court concluded that Dr Thaler hadn’t identified any basis in law on which he might have acquired such a right through his ownership of DABUS. 

Was the Hearing Officer entitled to hold that the applications would be taken to be withdrawn?

Section 13 of the UK Patents Act requires certain information to be provided to the UKIPO within a specified timeframe, otherwise the relevant application will be taken to be withdrawn. This includes a statement identifying the person the applicant believes to be the inventor and, where the applicant is not the inventor, indicating how the applicant derived their right to be granted the patent. Dr Thaler did not satisfy either of these requirements. By identifying DABUS as the inventor he failed to identify “a person” as the inventor; and he failed to identify how he derived his right to be granted a patent – asserting that he owned DABUS was not sufficient. As a consequence, the Supreme Court concluded that the Hearing Officer was right to find that the applications should be taken to be withdrawn.

Comment

This decision is unsurprising and reflects the outcome most IP practitioners would have expected. By concluding that AI cannot be an inventor for UK patent purposes, the Supreme Court has maintained the status quo and aligned the UK with the decisions taken in the majority of other jurisdictions in which Dr Thaler has tested the water (including the EPO, US, Australia and Germany).

Any change permitting AI itself to be named as an inventor (or otherwise enabling UK patents to be granted for inventions made solely by AI) will therefore require the UK Patents Act to be amended and Parliament to intervene. Readers of this blog may recall that amending the Patents Act was one of the things that the UKIPO expressly considered as part of its consultations on AI and IP back in 2022 (see here). But the UKIPO decided not to make any changes, citing amongst other things the need to ensure international alignment on the rules around inventorship and accordingly promising to advance AI inventorship discussions internationally. It will be interesting to see whether those discussions gather pace given the rapid progress of AI development.

In the meantime, the practical impact of this decision for now is expected to be limited as most believe that AI is not yet at the stage where it can truly invent. And, as the court alluded to, things might have been different had Dr Thaler argued that he was the inventor and DABUS had simply been used as a tool.