Artificial intelligence (AI) is becoming more and more sophisticated and may even be capable of invention. This has raised questions about whether an AI can be named as the inventor of a patent, which was the issue before the Supreme Court.
Dr Thaler applied in 2018 for two GB patent applications, which named his AI machine, DABUS (Device for the Autonomous Bootstrapping of Unified Sentience), as the inventor. As is part of the filing procedure, Dr Thaler was given a deadline to file a statement of inventorship, or otherwise, the applications would be withdrawn. Dr Thaler alleged that the AI, rather than Dr Thaler, was the inventor and his rights to the patent were derived from owning DABUS.
The Supreme Court upheld the decisions of the High Court and Court of Appeal that an AI could not be named as a patent inventor:
- Sections 7 and 13 of the Patents Act 1977 refer to a “person”.
- An inventor is the “actual deviser” of the invention, which means the person who devised the invention. There is no suggestion in the above Sections of the Patents Act 1977 that an inventor may be a machine.
- An earlier House of Lords (now Supreme Court) case referred to the inventor as the “natural person” who came up with the inventive concept.
Dr Thaler argued that the doctrine of accession applied, meaning that he gained the right to file the patent applications through being DABUS’ owner. The Supreme Court held that this doctrine could not apply; the AI machine was not the inventor, and an invention did not constitute tangible property, so title could not pass from the AI machine to Dr Thaler. Therefore, the patent applications were deemed withdrawn.
Considering the legal consensus across various territories
Dr Thaler appears to be part of the Artificial Inventor Project whose aim is to test legal systems in relation to IP rights for outputs generated by AI where there is no human inventor. According to their website, the AI Project has been seeking patents with an AI inventor across various territories, including at the European Patent Office, the US, New Zealand and South Africa: all have been refused bar South Africa.
This Supreme Court decision is in relation to naming an AI as the inventor rather than ruling on patents that had generative input from an AI.
There was a UK government consultation which closed in 2022 that considered the question of whether an AI can be named as an inventor of a patent (see our article here). One problem raised was that allowing an AI to be a patent inventor could cause issues with filing in other territories where this is not allowed.
The consultation concluded that no change to the law was needed but would be kept under review (see here). Following the consultation and this decision from the highest court in England and Wales, it appears unlikely that there will be a change for some time in this area (unless perhaps by way of international agreement).
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