Supreme Court decides AI machine cannot be named as inventor

Back in December 2019, the UK Intellectual Property Office (UKIPO) issued an original decision refusing to accept the designations of DABUS as the inventor on the ground that DABUS is not a “person”, referencing section 13(2) of the UK Patents Act.

Dr Thaler’s initial appeal of that UKIPO decision was dismissed by both the High Court and the Court of Appeal, with the latter decision stating that the Court “must apply the law as it presently stands” and that the case was “not an occasion for debating what the law ought to be”. In short, although the current law was established without the fast-developing world of AI in mind, the Court of Appeal was unable to adapt the law.

Dr Thaler had also filed corresponding patent applications in numerous other territories, including Europe, Germany, the US, South Korea, Australia, New Zealand, Israel and South Africa, and those jurisdictions had all debated the same issues independently.

Interestingly, the same outcome was reached in all of those jurisdictions, with the exception of South Africa, where the patent applications were granted. However, this anomaly has generally been attributed to the much less arduous nature of the South African patent examination process, and there is a widespread assumption that eventually the South African decision will either be appealed, or the patents will be revoked.

As a result, in a final attempt to succeed, Dr Thaler appealed to the UK Supreme Court – in the hope that, unlike the Court of Appeal, the UK Supreme Court could (and would), take the chance to progress the law in this area.

However, the UK Supreme Court did not oblige, instead unanimously deciding that, in response to questions 1 and 2 above:

• under the UK Patents Act, an inventor must be a “natural person”;
• only a “natural person” can devise an invention, and it is therefore legally impossible to name an AI machine as the inventor;
• an AI machine is not a person at all, never mind a “natural person”; and
• Parliament did not envisage a machine acting on its own (i.e. as an inventor) when passing the UK Patents Act.

In relation to question 3, Dr Thaler claimed that, because he is the owner of DABUS, he at least still has the right to be granted the patents himself through the doctrine of accession. However, in response, the UK Supreme Court decided that the doctrine of accession could not apply to Dr Thaler because:

• DABUS is not recognised as an inventor; and
• because his claim relies on the invention being tangible property, such that title to it can pass to the owner of the machine which generated it.

Hence, because Dr Thaler failed to identify the “natural person” who devised the inventions, both applications remained rejected.

First and foremost, this decision probably shouldn’t come as a surprise. It follows established principles that UK courts will rarely stray beyond the ordinary meaning of words, whether in legislation or in contract, and is also in keeping with the decisions in (most) other jurisdictions.

Some had, however, hoped that this case offered a chance for the UK’s patent laws to be updated to reflect the technological advancements that have occurred since the UK Patents Act was introduced nearly 50 years ago.

Nonetheless, reflecting on what might have happened had the decision gone the other way, this would, undoubtedly, have raised a number of further legal questions. For example, in the UK, ownership of an invention will naturally pass from an employee to employer provided the invention is made in the course of the employee’s normal, or specifically assigned, duties and the invention could be reasonably expected to result from those duties.

If an AI machine can be deemed a “person” in terms of inventorship, will ownership of the patent naturally pass to the owner of the machine, or to the employer of the owner of the machine? Will the owner of the AI machine need a contract of employment with the AI machine for ownership of the invention to pass naturally from the AI machine to the owner? In such event, is the AI machine deemed enough of a “person” to be capable of entering into a contract?

Perhaps thankfully, the UK Supreme Court has decided not to go down that road. However, given the rising prominence of AI in our day-to-day lives, it is surely only a matter of time before we see similar issues resurface.