Supreme Court finds that AI machines cannot be ‘inventors’ for the purpose of patent applications, Harry Jewson

In a recent test case the UK Supreme Court has confirmed that the ‘inventor’ identified in a patent application must be a natural person, not an AI.

On 20 December 2023, the UK Supreme Court handed down its judgment in Thaler v Comptroller-General of Patents, Designs and Trade Marks [2023] UKSC 49, an appeal from the Court of Appeal concerning patent applications for two inventions created by the AI machine DABUS. The Supreme Court held that for the purposes of sections 7 and 13 of the Patents Act 1977 (the “1977 Act”) an “inventor” must be a natural person and that DABUS therefore did not qualify as an inventor.

The UK judgment is the latest in a series of test cases involving the owner of DABUS – Dr Stephen Thaler – and his associates, who have made parallel applications to patent offices around the world in a bid to establish that the owners of AI systems can obtain patents for inventions created by those systems. With Dr Thaler having filed the UK patent applications in 2018, the UK proceedings have been running in parallel with the growing capabilities of AI technologies, making the issue at their core of increasingly greater importance the longer they have continued.

Background

In late October and November 2018 Dr Thaler, the developer of the AI machine DABUS, filed patent applications for two new inventions apparently autonomously created by DABUS: a food/drink container and a light beacon. The applications did not identify the inventor of the inventions so the UK Intellectual Property Office (“UKIPO”) notified Dr Thaler that he would need to file a ‘statement of inventorship’ identifying the inventor and, if the inventor was not Dr Thaler, explaining the grounds on which Dr Thaler had the right to apply for the patents (the patent applicant does not necessarily have to be the inventor). Dr Thaler duly filed statements identifying DABUS as the inventor and stating that, as owner of DABUS, he had the right to apply for the patents.

After further correspondence and a hearing in November 2019 the UK IPO issued a decision finding that, for the purpose of the relevant sections of the 1997 Act (namely sections 7 and 13), an “inventor” must be a natural person. Because DABUS was an AI machine rather than a natural person, it did not qualify as an inventor and consequently did not have any rights to transfer. Having failed to file compliant statements of inventorship by the relevant deadline Dr Thaler’s applications were treated as having been withdrawn.

Dr Thaler appealed to the Patents Court (High Court) and then to the Court of Appeal, which upheld the UK IPO Hearing Officer’s original decision. Dr Thaler then appealed to the Supreme Court.

Judgment

The Supreme Court unanimously dismissed the appeal, with Lord Kitchin’s lead judgment addressing the appeal’s three core issues as follows:

Considering sections 7 and 13 of the 1977 Act, the Court of Appeal, the Patents Court, and the UK IPO Hearing Officer were correct in finding that an “inventor” within the meaning of the 1977 Act must be a natural person. DABUS could not be an inventor.
In the absence of an inventor for the purpose of the 1977 Act Dr Thaler was not entitled to obtain patents for the inventions. Whilst section 7(2) of the 1977 Act does allow for someone other than an inventor to apply for and obtain a patent, it requires there to be an inventor (natural person) in the first place and, regardless, Dr Thaler did not fall within one of the applicable categories. Dr Thaler had argued that he had acquired title / ownership of the inventions (and, by extension, the right to patent them) under the doctrine of accession (i.e. as a matter of law, circumventing DABUS’ inability to transfer rights, if it were to have any). However, there were two “fundamental problems” with this line of argument. First, it assumed that DABUS could be an inventor, which it could not. Second, it mischaracterised the inventions as a form of tangible property rather than intangible concepts and descriptions of ways to put those concepts into practice.
As a result of Dr Thaler having failed to identify an inventor under the 1977 Act and/or to state a proper basis for his claim to be entitled to the grant of the patents, the UK IPO Hearing Officer had been right to treat Dr Thaler’s applications as having been withdrawn.

Analysis

The Supreme Court’s judgment provides clarification of the interpretation of the 1977 Act in the context of UK patent applications that identify AI machines / systems as inventors. However, the Supreme Court noted that the outcome of the proceedings may have been different had Dr Thaler identified himself as the inventor of the inventions through his use of DABUS as a highly-sophisticated tool owned by him (in which case the proceedings would have been less likely to become a test case).

It is also important to note that the judgment does not address the policy question of whether the definition of “inventor” under the 1977 Act should be expanded to include AI machines. Both the Court of Appeal and Supreme Court highlighted that this question fell outside the scope of the issues before the court, with Lord Kitchin noting that the case "is not concerned with the broader question of whether technical advances generated by machines acting autonomously and powered by AI should be patentable,” and Elisabeth Laing LJ commenting in her Court of Appeal judgment that"[i]f patents are to be granted in respect of inventions made by machines, the 1977 Act will have to be amended”.

As AI capabilities develop further, it will remain to be seen whether UK patent law will be amended to recognise AI machines as inventors in their own right rather than as tools used by human inventors, but amendments are unlikely in the near future.

Further information

In its 2023 White Paper the UK government has stated its intention to adopt a ‘pro-innovation’ approach to AI regulation. For our analysis of the White Paper and the subsequent Bletchley Declaration signed at the AI Safety Summit see here and here. For our Glossary of AI Law, Regulation and Policy see here.

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This article was written by Harry Jewson and Victoria McCarron. If you have any questions or would otherwise like to discuss any of the issues raised in this article, please contact David Varney, Tom Whittaker, Harry Jewson, or another member of our Technology Team.

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The judgment deals with whether a patent application listing an AI as the ‘inventor’ complies with the relevant legislation, not the wider question of the patentability of AI-derived inventions. The outcome may well have been different if the applicant (the AI’s developer) had listed himself as the inventor.