Can artificial intelligence (AI) be named as the inventor of new patents? Not according to a recent ruling from the UK Court of Appeal (Thaler v Comptroller General of Patents Trade Marks and Designs [2021] EWCA Civ 1374).

Dr Stephen Thaler, a US AI expert and creator of an AI system called DABUS, had submitted two UK patent applications, and listed DABUS as the inventor on both. It is claimed by Dr. Thaler that the system can independently develop and recognize the value and novelty of an invention without human intervention.

Dr. Thaler had also recently lost on a similar case in the USA, where it was held by a US District Judge that Federal law requires that an “individual” take an oath that he or she is the inventor on a patent application, and both the dictionary and legal definition of an individual is a natural person. The European Patent Office has also rejected Dr Thaler’s arguments.

However, Dr. Thaler has been successful in cases brought in Australia and South Africa. The Australian judgement stated that an inventor can simply be a “thing than invents”.

So, could a piece of patent law which was written for human inventors potentially be applied to machines?

Under UK patent law, one requirement for a patent application is that an inventor must be named for the invention, and under the Patents Act 1977, the inventor must be a ‘person’. Instead, Dr. Thaler named DABUS. The UKIPO consequently deemed the applications to be withdrawn as the requirement to name an inventor had not been fulfilled in time. Dr. Thaler contested this decision.

At the Court of First Instance, the UKIPO’s decision was upheld.

On appeal, it was held by a 2-1 majority that an inventor must be a real person, with Lord Justice Birss dissenting, stating that ‘the fact that the creator of the inventions in this case was a machine is no impediment to patents being granted to this applicant’.

Three main issues were considered in the appeal:

• Whether the inventor has to be a person;
• Was Dr Thaler entitled to apply for a patent for an invention created by the AI machine, as the creator/owner of the machine?
• Was the UKIPO correct in its rejection of the patent application?

The Patents Act 1977 defines an inventor as the “actual deviser” of the invention. It was held that the Act was drafted on the basis that an “inventor” had to be a “person” to be an actual deviser. Therefore, an AI machine – even if it did create the invention – is not currently recognised as an inventor under UK patent law.

An applicant for a patent who is not the inventor must be able to show how the rights in the invention are acquired from the inventor. For example, under UK patent law, an invention made by an employee in the normal course of their duties normally belongs to the employer. Alternatively, the applicant may derive the rights via assignment or another form of agreement.

It was argued by Dr. Thaler that he derived the rights in the invention as the owner of DABUS. It was held that this was incorrect as a matter of law, as this only applies to tangible property and there was no principle of law that an intangible property right (such as a patent right) which had been created by a person’s property could be legally owned by that person.

Finally, it was held that the UKIPO was correct in its rejection of the patent application, due to Dr Thaler failing to identify a person as the inventor, and prove how he derived the rights in the invention.

The appeal was therefore dismissed.

The UK Courts’ position on the inventorship status of AI has therefore been set out, for now at least. It remains to be seen whether Dr. Thaler appeals to the UK Supreme Court.

However, this position is not shared all around the world, and it is believed by some academics that the law is outdated and should be changed to reflect the new technology.

Whether governments around the world will see fit to update the patent law to recognise the inventorship of AI machines is something we will keep our eye on.

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