On 20 December 2023, the UK Supreme Court ruled that a machine acting autonomously and powered by artificial intelligence (AI) cannot be an inventor within the meaning of the UK Patents Act 1977 (UKPA).
This judgement reiterates earlier decisions by lower UK courts, and the initial finding of the UK IPO, that, inventions where there is no named human inventor are not eligible for patent protection. This decision also follows the decisions reached in most other jurisdictions in which Dr Thaler sought to prosecute these applications, including the European Patent Office.
This judgement relates to two patent applications that were filed by Dr Thaler at the UK IPO on 17 October 2018. The applications were for a new form of food or beverage container and a new kind of light beacon for attracting attention in an emergency. Neither application designated a human inventor, and no separate document designating a human inventor was ever filed. The request for grant stated Dr Thaler was not an inventor of the inventions described in the applications.
The UK IPO indicated that the applicant must file a statement of inventorship, and an indication of how Dr Thaler derived the right to be granted the patents for which he was applying. Failure to do so would lead to the applications being deemed withdrawn. Dr Thaler filed statements which indicated that each of the inventions were created by the AI of a machine called DABUS, and that he had acquired the right to the grant of the patents because he owned that machine.
A decision was issued explaining that DABUS was not a person as envisaged by section 7 or section 13 of the UKPA and was therefore not an inventor. DABUS therefore had no rights that could be transferred to allow Dr Thaler. Furthermore, Dr Thaler was not entitled to the grant of the patents on the basis of owning DABUS. Dr Thaler appealed to both the High Court and the Court of Appeal, both of which were dismissed, the latter on the basis DABUS did not qualify as an inventor within the meaning of the UKPA because an inventor is required to be a person.
The Supreme Court judgement emphasises that it is not concerned with whether technical advances generated by machines acting autonomously and powered by AI should be patentable, or whether the meaning of the term ‘inventor’ should be expanded. Rather, it is focused on the correct interpretation and application of the relevant provisions of the UKPA. In Lord Kitchin’s opinion, the appeal turned on three key issues:
- The scope and meaning of “inventor” in the 1977 Act.
- 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?
- Was the Hearing Officer entitled to hold that the applications would be taken to be withdrawn?
After considering sections 7 and 13 of the UKPA, it was held that an inventor must be a natural person. DABUS is not a person, let alone a natural person. For the second issue, Lord Kitchin explained that section 7 confers the right to apply for and obtain a patent and provides a complete code for that purpose. As a starting point, section 7 requires an inventor, and that inventor must be a person – DABUS is not a person. If the applicant is not an inventor (which Dr Thaler does not claim to be), then the applicant must either be entitled by rule of law or agreement with the inventor or a successor in title. Dr Thaler did not satisfy either of these criteria.
Dr Thaler attempted to rely on arguments related to the doctrine of accession, i.e., that DABUS’ inventions were the fruits of his DABUS machine, and that as owner of DABUS, he was the owner of all rights in DABUS’s developments. These arguments were rejected mainly on the basis that an invention is not a tangible property, whereas the doctrine of accession relates to the ownership of new tangible property created by existing tangible property. Therefore, its application in this case was misguided.
In any case, those arguments would not have overcome the need for an inventor. For this last issue, it was held that the hearing officer was right to find the applications to be withdrawn because the requirements of section 13 were not met – DABUS is legally incapable of being an inventor, and Dr Thaler is not entitled to the grant of the patents simply by owning DABUS.
This decision was widely expected, as it reflects similar findings in most other jurisdictions in which Dr Thaler brought similar actions. Namely, that an inventor named in a patent application must be a natural person and cannot be a machine. In other words, inventions which are created by machines (or AI) without any human inventor are not patentable. However, the judgement seems to acknowledge that this topic is becoming increasingly important as technological advances in the field of AI continue at a significant rate, with a paragraph quoting the Court of Appeal judgement “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”. It will be interesting to see whether legislators will seriously begin to consider changing the law to accommodate machine (and more specifically AI) inventors.
However, one should not overlook the fact that AI systems are themselves patentable. If the AI system has an inventive structure then it is usually worth protecting the system itself, rather than the results generated when the system is applied as a tool to solve a particular problem.