On 20 December 2023, The Supreme Court dismissed the appeal of Dr Stephen Thaler, reiterating earlier decisions as to the ineligibility for patent protection of inventions where there is no named human inventor.
In its judgment, the Supreme Court held that an inventor, for the purposes of the Patent Act 1977 (the Act), must be a natural person, and that therefore an autonomous AI system cannot be named as inventor under the current provisions of the Act. Further, the Supreme Court held that, under the Act, ownership of an AI system does not confer a right for the owner to apply for or obtain a patent relating to inventions generated by said AI system.
This decision is the latest in a series of test cases filed around the world by Dr Thaler in respect of inventions generated by his AI system known as ‘DABUS’ (see here), the majority of which have been rejected.
Background
In late October 2018, Dr Thaler filed two patent applications under the Patents Act 1977 for a new form of food container and an emergency lighting beacon. Neither application designated a human inventor, and the request for grant forms accompanying the applications expressly stated that Dr Thaler was not an inventor either. The UKIPO responded to these applications by requesting statements of inventorship be filed, and that Dr Thaler indicate how he derived the right to be granted the patent within 16 months. A failure to do so would mean that the patent applications would be taken to be withdrawn, in accordance with rule 10(3) of the Patent Rules 2007.
On 23 July 2019 Dr Thaler filed his statements of inventorship, which outlined Dr Thaler’s position – the inventions were created by his AI machine DABUS and Dr Thaler had acquired the right to the grant of the patents as the owner of the machine. A hearing took place on 14 November 2019.
On 4 December 2019, a decision was issued by the UKIPO, finding that DABUS was not a person as envisaged by section 7 or section 13 of the Patents Act 1977 and so was not an inventor, and that therefore DABUS had no rights that could be transferred to allow Dr Thaler to apply for patents in respect of the inventions. Further, Dr Thaler was not entitled to the grant of a patent on the basis that he owned DABUS.
Dr Thaler appealed the refusal to the High Court, which was dismissed by Marcus Smith J on 21 September 2020, upholding the grounds of refusal by the UKIPO. The Court of Appeal dismissed a subsequent appeal by Dr Thaler on 21 September 2021, where the court held by a majority (Arnold LJ and Elisabeth Laing LJ) that DABUS could not be an inventor per the Patents Act 1977, as such an inventor was required to be a person.
For further background, an explanation of the relevant law and a summary of previous decisions please see our blog post here (on the UK High Court decision), and here (on the UK Court of Appeal decision).
Leave was provided to appeal to the UK Supreme Court. This appeal was heard on 2 March 2023 by Lord Hodge, Lord Kitchen, Lord Hamblen Lord Leggat and Lord Richards.
Supreme Court Judgment
Lord Kitchin’s judgment (with whom Lord Hodge, Lord Hamblen, Lord Leggatt and Lord Richards all agreed) makes clear that it is not concerned with the more general issue of whether technical advances generated by AI powered autonomous machines should be patentable, or whether the term “inventor” should be expanded to include AI powered machines. The appeal instead concerns “the much more focused question of the correct interpretation and application of the relevant provisions of the [Patents Act 1977]“. The Supreme Court addressed three key issues.
Issue 1: Scope and meaning of “inventor”
In considering sections 7 and 13 of the Patents Act 1977, the Supreme Court held that an inventor within the meaning of the Act must be a natural person, which DABUS was not. An inventor is the deviser of the invention, which through its ordinary meaning would be “a person who devises a new and non-obvious product or process”.
Accordingly, it was held that DABUS “is not a person, let alone a natural person and it did not devise any relevant invention. Accordingly, it is not and never was an “inventor” for the purposes of section 7 or 13 of the 1977 Act”.
Issue 2: Was Dr Thaler 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?
Lord Kitchin noted that the Act “confers the right to apply for and obtain a patent and it provides a complete code for that purpose”. Under section 7 of the Patents Act 1977, if the applicant is not the inventor (which Dr Thaler has never claimed to be) then the applicant must fall into one of the limbs of either section 7(2)(b) (persons entitled by rule of law or agreement with the inventor) or section 7(2)(c) (successors in title).
The Court held that Dr Thaler does not satisfy “any part of this carefully structured code”. At its starting point, section 7 requires an inventor, and that inventor must be a person. DABUS “was not and is not a person”.
The Supreme Court did not accept Dr Thaler’s submissions on the doctrine of accession, in which he sought to rely on arguments based on a property right in an invention. Dr Thaler argued that DABUS’ inventions were the “fruits” of his DABUS machine and that just as “the farmer owns the cow and the calf”, Dr Thaler submitted that, as owner of DABUS, he was the owner of all rights in DABUS’s developments.
The Supreme Court rejected this (as the lower courts had). Lord Kitchin noted that firstly (and fatally), this argument did not overcome the need for an inventor; and DABUS was not an inventor. Secondly, the doctrine of accession argument was misguided, and the analogy presented by Dr Thaler false. The doctrine was concerned with the ownership of new tangible property created by existing tangible property (the calf and the cow in Dr Thaler’s example). There is no tangible property in an invention, however. Rather, the right in an invention under the Act was the right to apply for a patent where the other requirements of Act were satisfied. The doctrine of accession did not confer on Dr Thaler property in or the right to apply for a patent in these circumstances.
Issue 3: Was the Hearing Officer entitled to hold that the applications would be taken to be withdrawn?
Given that, for the reasons above:
- Dr Thaler failed to identify any person or persons whom he believed to be the inventor or inventors of the inventions described in the applications; and
- his ownership of DABUS did not provide a proper basis for accepting his claim to be entitled to the grant of these patents;
The Comptroller was right to find the applications would be taken to be withdrawn at the expiry of the sixteen-month period in accordance with rule 10(3) of the Patent Rules 2007.
Implications and comment
The decision of the Supreme Court was widely anticipated, as the Act is relatively clear in respect of the requirement that an inventor named in a patent application be a natural person and cannot be a machine (or AI). It also follows the decisions reached in most other jurisdictions in which Dr Thaler has sought to prosecute these applications.
Importantly for businesses, the decision reinforces the position that, under current law, inventions which are truly created by AI without any human inventor are not patentable in the UK. Of course, it may often be the case that there is human oversight of AI in directing its work, such that a human inventor can be named. However, this may not always be the case (at least in the future) and we may expect to see challenges where AI has been used and a human has been named as an inventor in a patent application as to whether or not there can properly be said to be a human inventor (and thus whether or not the invention can be said to be patentable). Organisations using AI to in their development processes will need to be careful in crafting policies and processes to ensure that their inventions remain patentable while making use of the benefits AI assistance can bring.
That said, the Supreme Court made clear the limits of its judgment, acknowledging the increasing importance of these questions in light of the significant recent advances in AI technology, and the policy issues that accompany them. It was considering a narrow point of interpretation of the current law, rather than the wider question of what form protections for AI generated works might take in the future, which are, properly, questions for the legislature and not the courts. Lord Kitchin quoted with approval the comments made by Elisabeth Laing LJ in the Court of Appeal in this regard:
“Whether or not thinking machines were capable of devising inventions in 1977, it is clear to me that that Parliament did not have them in mind when enacting this scheme. If patents are to be granted in respect of inventions made by machines, the 1977 Act will have to be amended.” (para 103)
A UKIPO consultation on AI and IP law in 2022 concluded that no changes to UK patent law were then needed, including in respect of inventorship requirements. It found that the majority of respondents to the consultation considered that AI technology was not sufficiently advanced to enable invention without human intervention. Whether or not this remains the case, it is likely that questions over the proper way to protect AI-devised inventions and other outputs will only become more pronounced in the coming years. Legislatures around the world are continuing to look at these issues, and at other jurisdictions, as they grapple with how best to cater for the diverse interests and strongly held views in this area.
For further information, please contact:
Peter Dalton, Partner, Herbert Smith Freehills
peter.dalton@hsf.com
