In December 2023, the Supreme Court of the United Kingdom held that an AI cannot be an inventor under the UK Patents Act of 1977, and accordingly patents cannot be granted for inventions derived by AI.
Thaler v Comptroller-General of Patents Designs and Trade Marks, considers Dr. Stephen Thaler’s applications for patents for two products and processes that were allegedly generated autonomously by an artificial intelligence (AI) named DABUS. Dr. Thaler filed these applications on 17 October 2018 and 7 November 2018, respectively, for a new kind of food or beverage container and a new kind of light beacon for emergency situations. He did not designate any human inventor for these applications.
The key issue was whether an AI system, in this case DABUS, can be recognised as an inventor under the Patents Act. The Hearing Officer for the Comptroller-General of Patents decided that the applications should be considered withdrawn because: DABUS did not qualify as an inventor within the meaning of the Patents Act; Dr. Thaler was not entitled to apply for patents since the supposed inventions were autonomously made by the DABUS; and Dr. Thaler failed to identify any natural person as the inventor or explain his right to the patents.
Dr. Thaler’s appeals to the High Court and the Court of Appeal were unsuccessful. The courts upheld the Hearing Officer’s decision, emphasising that an inventor, as defined in the Patents Act, must be a natural person. The court found no basis in the law for Dr. Thaler’s claim to apply for and obtain patents simply by owning the AI system that generated the inventions.
This judgment reaffirmed these conclusions, stating that DABUS could not be an inventor as it was not a natural person, and thus, Dr. Thaler, who was not the inventor of the inventions described in the applications, had no independent right to obtain a patent for them. The judgment also clarified that the Hearing Officer was correct in deciding that the applications should be taken to be withdrawn due to failure to satisfy the requirements of Section 13 of the Patents Act, which necessitates the identification of a human inventor.
The crux of the court’s reasoning lies in the interpretation of Sections 7 and 13 of the Patents Act. Section 7 outlines the right to apply for and obtain a patent, with subsection (3) defining an inventor as the actual deviser of the invention, implying a natural person. Section 13 emphasizes the inventor’s right to be mentioned in any granted patent and requires applicants to identify the inventor(s) and explain the derivation of their right to the patent. Rule 10 further elaborates on the mention of the inventor and the consequences of failing to comply with these requirements.
Important is that Dr Thaler argued he accrued the rights to the patent because he owned DABUS, which was described as functioning autonomously to generate the inventions, so he was entitled to the fruits of the machine similar to how a farmer who owned the cow, would own the calf. The Court dismissed this argument. DABUS was not an employee nor any similar relationship which could pass inventorship, as DABUS could not satisfy the requirements to be an inventor. The doctrine of accession was not applicable in this scenario as it was not a case where tangible property was producing further tangible property but rather the creation of “concepts for new and non-obvious devices and methods, and descriptions of ways to put them into practice, all of which, so Dr Thaler maintains, have been generated autonomously by DABUS”.
It is curious that this was the approach used by Dr Thaler. As noted by the Court, it “has never been Dr Thaler’s case that he was the inventor and used DABUS as a highly sophisticated tool. Had he done so, the outcome of these proceedings might well have been different.”