Supreme Court rules that an AI machine is not an inventor

In a straightforward, unanimous judgment the Supreme Court has held that an AI machine cannot be an '"inventor" under the Patents Act 1977, and that ownership of an AI machine does not confer on its owner a right to apply for or be granted patents for anything created by that machine.

The keenly-awaited decision in Thaler v Comptroller-General of Patents, Designs and Trade Marks ([2023] UKSC 49) is unsurprising and upholds the decisions made by each of the Comptroller-General of Patents, Designs and Trade Marks ("Comptroller"), the High Court and the Court of Appeal.

Facts

Dr Thaler applied for two patents for products and processes which were generated by an artificial intelligence machine, called DABUS. The application did not designate a human inventor; Thaler specifically said he was not the inventor and that the inventions were "entirely and solely conceived by DABUS". 

As set out below, a patent applicant need not be an inventor, but if not, the applicant must indicate how they have derived the right to apply for and be granted a patent. If the applicant does not adequately respond to the UKIPO's requests for deficiencies to be rectified within the set time period, the patent applications are deemed to have been withdrawn.

For the purpose of the proceedings it was assumed that the inventions were patentable and that the facts as stated by Thaler (e.g. that DABUS had indeed created the technical developments) were correct.  The judgment therefore focuses solely on the interpretation of the law.

Supreme Court's decision

Kitchin LJ giving judgment for the court considered the framework of the Patents Act 1977 ("PA") as a whole, and focussed on sections 7 and 13 (see below for full text) which set out who can apply for a patent and the right of the inventor to be mentioned. 

There were three issues to address: 

1) What does the PA mean by "inventor"?

Following the ordinary, natural meaning of the word, "an inventor within the meaning of the 1977 Act must be a natural person, and DABUS is not a person at all, let alone a natural person".  Support for this was found in the House of Lords case Rhone-Poulenc Rorer International Holdings Inc v Yeda Research and Development Co Ltd ([2007] UKHL 43, [2007] Bus LR 1796), in the wording of ss 7 and 13 PA, and in several other sections of the PA, which are consistent:  "there is no suggestion in any of these provisions that an inventor may be a machine". There was no doubt that an inventor must be a natural person.

2) Was Dr Thaler nonetheless the owner of any invention made by the machine and entitled to apply for and obtain a patent in respect of it?

No. The net effect of the wording of s7 is that only "the inventor or someone claiming through him" (per Hoffman LJ in Yeda Research) may be granted a patent. DABUS was not an inventor. Thaler was not an inventor. Given there was no inventor, Thaler could not be a person claiming through the inventor and thereby deriving a right to the invention under s7(2)(b) or (c). 

Thaler had argued that as he owned the machine, he owned the right to its outputs by analogy to or application of the doctrine of accession. However, that doctrine concerns "a new item of tangible property produced by an existing item of tangible property" (such that e.g. the farmer owns both the cow and its calf); this was not the case here and there was "no principled basis for applying the doctrine of accession in these circumstances". Thaler had no right to be granted a patent over technical developments made by the machine. 

3) Was the Hearing Officer entitled to hold that the patent applications would be taken to be withdrawn?

Yes. DABUS was not an inventor and Thaler had not established that he had the right to apply for and obtain patents over technical developments made by DABUS. The applications were therefore taken to have been withdrawn.

Kitchin LJ was careful to clarify that "This is not to impose an additional requirement for patentability; nor does it introduce a new ground for refusing patent applications. It is the consequence prescribed by" the PA.

Birss LJ's dissenting opinion in the Court of Appeal

In the Court of Appeal, Birss LJ had agreed that DABUS was not an inventor, but said Thaler had nonetheless complied with the PA's requirements because he had "identified the person who he believed to be the inventor … and how he claimed to have derived the right to be granted a patent", and that the Comptroller did not need to be satisfied that those claims were good and sound.  He would therefore have permitted the applications to proceed.

Kitchin LJ disagreed, holding that while it is not for the UKIPO to investigate the correctness of statements of fact made by the applicant, it may still intervene where those statements are obviously defective or insufficient, as here.

Comments

This decision is not a surprise and provides welcome certainty in a fast-evolving area of law. However it should be noted that the questions asked were quite narrow and the circumstances quite specific; there is no consideration of what would have happened had e.g. Thaler identified himself as the inventor using DABUS as a tool, and no consideration of wider issues such as the patentability of the "inventions".

On these specific circumstances though the law is clear; what Dr Thaler sought needs a change of law. Laing LJ said in the Court of Appeal: "Whether or not thinking machines were capable of devising inventions in 1977, it is clear to me 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."

Thaler has pursued this case in several jurisdictions (notably the EPO and US) with identical results, save in South Africa which does not substantively examine patent applications and therefore has not considered the same issues. Thaler also applied for US copyright registrations for digital artwork created by an AI system; the US Copyright Office refused because it lacked any human authorship, which was upheld by the District Court. Thaler's appeal is ongoing.

The legal landscape surrounding artificial intelligence is likely to see significant debate and movement in the coming months and we will continue to monitor and report on this.  See here our blog on the private members' bill on AI introduced in late 2023 (to which the Digital Secretary appeared oblivious when making a speech before the Science, Innovation and Technology Committee on 13 December 2023):  New UK Artificial Intelligence (Regulation) Bill introduced | Fieldfisher

Sections 7 & 13 PA

7 Right to apply for and obtain a patent.

(1) Any person may make an application for a patent either alone or jointly with another.

(2) A patent for an invention may be granted—

(a) primarily to the inventor or joint inventors;

(b) in preference to the foregoing, to any person or persons who, by virtue of any enactment or rule of law, or any foreign law or treaty or international convention, or by virtue of an enforceable term of any agreement entered into with the inventor before the making of the invention, was or were at the time of the making of the invention entitled to the whole of the property in it (other than equitable interests) in the United Kingdom;

(c) in any event, to the successor or successors in title of any person or persons mentioned in paragraph (a) or (b) above or any person so mentioned and the successor or successors in title of another person so mentioned;

and to no other person.

(3) In this Act ‘inventor’ in relation to an invention means the actual deviser of the invention and ‘joint inventor’ shall be construed accordingly.

(4) Except so far as the contrary is established, a person who makes an application for a patent shall be taken to be the person who is entitled under subsection (2) above to be granted a patent and two or more persons who make such an application jointly shall be taken to be the persons so entitled.

13 Mention of inventor.

(1) The inventor or joint inventors of an invention shall have a right to be mentioned as such in any patent granted for the invention and shall also have a right to be so mentioned if possible in any published application for a patent for the invention and, if not so mentioned, a right to be so mentioned in accordance with rules in a prescribed document.

(2) Unless he has already given the Patent Office the information hereinafter mentioned, an applicant for a patent shall within the prescribed period file with the Patent Office a statement—

(a) identifying the person or persons whom he believes to be the inventor or inventors; and

(b) where the applicant is not the sole inventor or the applicants are not the joint inventors, indicating the derivation of his or their right to be granted the patent; and, if he fails to do so, the application shall be taken to be withdrawn.

(3) Where a person has been mentioned as sole or joint inventor in pursuance of this section, any other person who alleges that the former ought not to have been so mentioned may at any time apply to the comptroller for a certificate to that effect, and the comptroller may issue such a certificate; and if he does so, he shall accordingly rectify any undistributed copies of the patent and of any documents prescribed for the purposes of subsection (1) above.