The UK Supreme Court has today (2 March 2023) heard the appeal by Dr Thaler against the Court of Appeal’s dismissal of his appeal from the Comptroller of Patents in relation to a patent application for which the inventor was an AI (DABUS), and which the Comptroller had dismissed when Dr Thaler provided a statement of inventorship identifying an AI as the inventor.
Why does it matter whether an AI can be an inventor of a patent?
The whole intellectual property system is based on an assessment of effort, creativity and inventiveness by humans and the appropriate reward from the State for this. The High Court in this case held that inventor of a patent is de facto the owner of it, and that only an entity with legal personality can hold and transfer property rights, and the Court of Appeal agreed. Practically, if you introduce the possibility of an AI as an inventor then challenging a patent’s validity becomes a completely different process, with an assessment of whether an AI was being “inventive” in creating the invention or whether it was something that would be an obvious conclusion when all avenues were explored (and AI is very good at exploring all and every avenue, although arguably only as directed by a human currently). The products of AI are already being protected by patents (rather than the AI being given protection itself through being the inventor). UK copyright law also makes provision for the person arranging the computer generated work to own the copyright in it which can also be helpful when protecting the products of an AI system. For more on AI and IP worldwide, read our series “The IP in AI”.
The Court of Appeal decision being appealed
Back in the autumn of 2021, the Court of Appeal (CA) dismissed Dr Thaler’s appeal from the High Court’s dismissal of his appeal. The CA rejected the concept of AI as an inventor and reaffirmed that the legislation required a human inventor. However this dismissal was by a majority, with Lord Justice Birss delivering a dissenting judgment. Birss LJ in fact agreed with the majority of Lords Justices that, under the Patents Act 1977, the term “inventor” meant a natural person and could not include an AI. Nevertheless, he disagreed over the correct course of action the Comptroller should take on receipt of a statement of inventorship which identified a non-human as an inventor, and held that the application should have been allowed to proceed to examination, and, if valid, to grant, subject to any challenges by third parties, leaving the way open for a further appeal to the Supreme Court.
The Supreme Court’s decision follows the UK IPO’s consultation
The Supreme Court has limited manoeuvrability in this appeal given the restrictions imposed by the patent legislation. It might have been thought that the recent UK IPO Consultation on the use of IP rights in AI which was still due to report when the Court of Appeal gave its decision, might have resolved this issue. However, the consultation concluded that for AI-devised inventions no change to UK patent law was currently needed: “Most respondents felt that AI is not yet advanced enough to invent without human intervention. But we will keep this area of law under review to ensure that the UK patent system supports AI innovation and the use of AI in the UK. We will seek to advance AI inventorship discussions internationally to support UK economic interests”. The Supreme Court’s decision, once it comes, will certainly provide a marker point at which to review the law again in this context should the Government so decide.
For further information, please contact:
Rachel Montagnon, Herbert Smith Freehills
rachel.montagnon@hsf.com
