On 2 March 2023, the case of Thaler v Comptroller-General of Patents, Designs and Trade Marks was heard before the UK Supreme Court. It’s been nearly four years since the UK IPO rejected Dr Thaler’s two patent applications on the basis that he designated his artificial intelligence (AI) machine ‘DABUS’ as the inventor of those inventions. Since then, the UK IPO’s findings have been upheld in both the High Court and the Court of Appeal, as discussed on our blog here and here.

Whilst we’ll soon know whether the UK Patents Act 1977 (“PA 1977”) recognises the possibility of an AI machine being an inventor of a patent, perhaps the bigger question is whether UK Patent Law should recognise AI machine inventorship?

Background 

In 2018, Dr Thaler submitted two applications on the basis that his AI machine DABUS had devised the invention and that he, as owner of DABUS, therefore had the right to apply for the patents.

The UK IPO refused to accept DABUS as inventor on the basis that the Patents Act requires an inventor to be a person. The UK IPO ultimately deemed Thaler’s applications withdrawn under section 13(2) PA 1977 as he had failed to identify an appropriate person as the inventor within the prescribed time period.

In 2020, the High Court rejected Thaler’s appeal and upheld the UK IPO’s decision. The court concluded that the term ‘inventor’ in section 7 PA 1977 referred to a person and did not permit machines to be inventors. As DABUS was not a person, it could not own the IP and so the transfer of ownership to Dr Thaler could not take place. Thaler was therefore not entitled to apply for the patents under section 7(2) PA 1977.

In 2021, the Court of Appeal also rejected Thaler’s appeal, with all three Lord Justices in agreement with the Court’s interpretation of section 7 PA 1977. However, opinion was split on the operation of section 13 PA 1977. Birss LJ was of the dissenting view that Thaler’s subjective belief was valid as the purpose of section 13(2) PA 1977 was not to identity the “factual correctness” of the inventor’s identity but merely to simplify the patent application process.

Decision for the Supreme Court 

The Supreme Court is to decide: 

1. Does section 13(2)(a) PA 1977 require a person to be named as the inventor in all cases, including where the applicant believes the invention was created by an AI machine in the absence of a traditional human inventor?
2. Does the Act provide for the grant of a patent without a named human inventor?
3. In the case of an invention made by an AI machine, is the owner, creator and user of that AI machine entitled to the grant of a patent for that invention?

Should UK Patent Law recognise machine inventorship? 

“We must apply the law as it presently stands, this is not an occasion for debating what the law ought to be” Arnold LJ, Court of Appeal. 

The Supreme Court is not expected to deliver its decision for the next few months. Whilst there’s no denying that the odds aren’t in Dr Thaler’s favour as the law currently stands – perhaps this is a sign that we’re due a legislative update?

In June 2022, the UK Government published its response to the IPO ‘Consultation on Artificial Intelligence and Intellectual Property’. In that response the government indicated that it had no plans to change UK patent law to expand the protection available to AI inventions. The decision was reached on the basis that most respondents to the consultation believed that AI is currently not advanced enough to invent without human intervention. Therefore, a unilateral change to UK legislation was said to be premature and might prejudice international patent filings in the absence of international harmonisation.

Those in favour of recognising machine “personhood” argue allowing AI inventorship would encourage investment in AI technology and incentivise innovation. This could lead to significant inventive breakthroughs, particularly in the pharmaceutical industry which increasingly relies on AI in its research & development.

A less radical solution could be to create a separate category for AI generated inventions, akin to the protection which is available under copyright law for “computer-generated works”. Alternatively, the definition of inventor could be expanded to allow the human responsible for the AI to be named as inventor.

Ultimately, it may only be a matter of time before inventions advance from being AI-assisted (i.e., with human intervention) to AI-generated (i.e., autonomously created by AI). The rapid development of AI capabilities suggests that there may be a renewed urgency for the government to “seek to advance AI inventorship discussions internationally to support [the UK’s] economic interests and competitive edge”.