Rapid advances in artificial intelligence (“AI”) are unlocking enhanced capabilities for machine learning, data interpretation and innovation, whilst also increasingly becoming useful in our everyday lives. AI now plays a key role in drug discovery, the advertisements we see recommended to us online, route suggestions for online mapping platforms, and auto-generated digital content. Recently, this has raised questions for traditional thinking around intellectual property law, with particular implications for patent ownership and invention. The question is – could AI be capable of being considered an inventor?
AI, Patents and the Law
Currently, under the UK Patents Act 1977, for a patent to be granted an invention must be:
- involve an inventive step; and
- be capable of industrial application.
An additional step, that an inventor must be human, was recently put to the test.
The AI at the heart of this development, known as DABUS ("device for the autonomous bootstrapping of unified sentience"), was created by Thomas Thaler. Dubbed the ‘artificial inventor’, Thaler claims that DABUS “has an emotional appreciation for what it conceives” and is capable of invention. A team of lawyers claim that patent law in many jurisdictions no longer reflects the digital age, with narrow conceptions of what an inventor can be . A series of patents have therefore been filed across the world, from Israel to India, with DABUS listed as the inventor. In the United Kingdom, the University of Surrey assisted Thaler with filing two patents in 2018. The Intellectual Property Office (“IPO”) then rejected these applications, as DABUS was not a natural person and therefore incapable of being an inventor .
Thaler appealed the IPO’s decision to the High Court. In Thaler v The Comptroller-General of Patents, Designs And Trade Marks  EWHC 2412 (Pat), this appeal was dismissed. After analysing the law, Mr Justice Smith emphasised that the law was clear – inventors must be natural people and not machines. Interestingly, the IPO and the High Court did not reject the idea that DABUS was the creator of the inventions that were being patented. The High Court decision instead focused on whether DABUS in particular was capable of being defined as an inventor under UK patent law. This then left open a question – is AI capable of discovery and invention, or is AI simply another tool through which an inventor can discover and invent new things?
Thaler decided to escalate to the UK Court of Appeal. In September 2021, with a two-to-one majority the Appeal Court ruled against him in Thaler v Comptroller General of Patents Trade Marks and Designs  EWCA Civ 1374. This ruling again set out that DABUS was not an inventor under UK patent law. However, Lord Justice Birss dissented – although he agreed that a machine was not a person, he reasoned that the IPO did not require that an individual be named as an inventor.
It seems that so far in the UK, the courts have made it clear that an AI cannot currently be considered an inventor. However, the queries continue in other jurisdictions.
Patents have been filed with DABUS as the inventor in numerous countries. Several are still pending in locations such as Brazil, Canada, China, India, Japan and Korea. However, patents have been rejected in the United States, Europe, Germany and Australia – Thaler is in the process of appealing. Yet, in July 2021, South Africa granted the world’s first patent invented by an AI for one of DABUS’ creations. This highlights that although many countries are rejecting the DABUS patents, not every jurisdiction will see an ‘inventor’ in the same way.
Overall, the DABUS patent applications have sparked discussions over whether patent law is in line with digital advancements in invention. Patents are often viewed as a method of fostering innovation, rewarding those who can produce new creations with an exclusive monopoly. However, perhaps patent law has its limits in terms of recognising machines as inventors. It seems that in most jurisdictions, for now AI is merely a tool to assist with discovering new ideas by increasing efficiency or extracting useful information from complex datasets. The human being behind an AI-generated invention is typically deemed the ultimate inventor. However, as seen by the South African patent, this view may be increasingly open to challenge in the coming years as AI capabilities increase.
Written by Laura Craig, a Solicitor in our Technology and Data team.