UK Supreme Court rules that artificial intelligence does not fit the description of an “inventor”
On Wednesday, the UK Supreme Court ruled that artificial intelligence does not fit the description of an “inventor” and is thus not eligible for patent protection on any ideas it may conceive. This decision is in line with other jurisdictions, including the US Court of Appeals for the Federal Circuit.
The case, Thaler v Comptroller General, focused on two applications filed by Dr. Stephen Thaler. Dr. Thaler did not designate an inventor on either application and when asked by the UKIPO to provide a statement of inventorship identifying the inventor, he stated he was not the inventor. He claimed that the inventions were created by AI through a machine called DABUS and that he had the right to the patents by merely owning DABUS.
Is Artificial Intelligence the True 'Inventor'?
The Court addressed three main issues: (1) the scope and meaning of “inventor” in the 1977 Act, (2) was Dr. Thaler nevertheless 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a patent in respect of it, and (3) was the Hearing Officer entitled to hold that the applications would be taken to be withdrawn.
Regarding the first issue, the Court acknowledged that every level in the proceedings and every judge who considered the issue had ruled against Dr. Thaler. The Court agreed with the Comptroller’s position that an inventor must be a natural person and that DABUS is not a person at all, let alone a natural person. The Court proceeded to discuss the meaning of the word “inventor” as used in certain sections of the Patents Act 1977 as well as in view of the whole Act. The discussed sections all mentioned interpreting an inventor as a natural person, with some additionally including that an inventor must have a legal personality. As DABUS did not meet either criteria, the Court ruled it was not and never was an “inventor” for purposes of either Section 7 or Section 13 of the Patents Act 1977.
Regarding the second issue, Dr. Thaler’s argument hinged on Section 39 of the Patents Act 1977, contending:
[T]hat an invention (as distinct from a patent or patent application) is a kind of property and, as between the employee and the employer, an invention made in any of the particular circumstances described in section 39(1) shall be taken to belong to the employer, but if made in other circumstances shall be taken to belong to the employee. What is more, where it is to be taken as belonging to the employee, the right is transferable by the employee.
Yet Dr. Thaler also acknowledged that there was no employment relationship between him and DABUS. Instead, he claimed that he had the right to the patents by the doctrine of accession. The inventions produced by DABUS were intentional as DABUS was designed to create them. Therefore, he believed that he derived title by the doctrine of accession and thus satisfied the terms of Section 7(2)(b) of the Patents Act 1977.
The Court disagreed with the argument for two reasons. The first being that DABUS is a machine and not a person. As such, there is no inventor who could pass rights to Dr. Thaler. Second, the Court stated the doctrine of accession is meant to cover new tangible property produced by existing tangible property. The inventions conceived by DABUS do not fit the description and as such, there is no principled basis for applying the doctrine of accession in this situation. The Court concluded that “the doctrine of accession does not “as a matter of law, operate to confer on him the property in or the right to apply for and obtain a patent for any technical development made by DABUS.”
Regarding the third and final issue, the Court ruled that the Hearing Officer for the Comptroller was entitled to hold the applications to be withdrawn for failure to satisfy Section 13 of the Act. The Court briefly discussed the facts that DABUS was not legally capable of being an inventor and that Dr. Thaler did not establish any basis for being entitled to apply for and obtain patents for inventions made by DABUS merely by owning the machine. Dr Thaler failed to satisfy Section 13(2)(a) of the 1977 Act as he did not identify any person whom he believed to be the inventor. Additionally, Dr Thaler also failed to satisfy Section 13(2)(b) as the fact that he owned DABUS was not a proper basis for acceptance of the application.
Dr. Thaler is no stranger to courts with regard to protecting the intellectual property that DABUS creates. He was met with a similar decision by the United States Court of Appeals for the Federal Circuit on August 5, 2022. A year later, on August 18, 2023, the US District Court for the District of Columbia also declined to protect DABUS’s creations, but this time it was directed to copyrighting AI-generated works. While Dr. Thaler continues to try his luck in other jurisdictions, he has not had much success. South Africa has been the only country to grant DABUS a patent for an invention conceived by an AI Inventor.
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