Can AI be an inventor? Final Supreme Court DABUS appeal
On 2 March 2023, the Supreme Court heard the final appeal regarding whether AI can be named as a…
The UK Supreme Court has announced its judgment (available here) in the ongoing DABUS series of cases regarding AI inventors named on UK patent applications.
Our article discussing the Supreme Court hearing can be found here.
The appeal decided upon by the Supreme Court was brought by Dr Stephen Thaler, who has created an Artificial Intelligence (AI) machine named DABUS (short for Device for the Autonomous Bootstrapping of Unified Sentience).
Dr Thaler has applied for two UK patent applications, GB1816909.4 and GB1818161.0, and has named DABUS as the sole inventor of both inventions described therein.
Dr Thaler has applied for patents naming DABUS as an inventor in several jurisdictions, with the various applications being seen as test cases used to establish the position of AI inventors (and if AI can indeed be an inventor).
For both applications, the UKIPO had refused to accept a statement of inventorship naming DABUS as an inventor, on the grounds that DABUS cannot be an inventor, as it is not a natural person. Dr Thaler has since appealed the UKIPO’s decision to the High Court and Court of Appeal, which both agreed with the UKIPO in their judgments.
Another issue raised in this series of cases is the potential ownership of any AI inventions, as Dr Thaler has applied for these patent on the basis that he is inherently the owner of DABUS’ inventions, on the ground that he owns DABUS.
This Supreme Court appeal is the final appeal possible in this matter and will determine the eligibility of AI machines as inventors before the UKIPO.
The appeal itself focused on three core issues, each of which were discussed in a hearing on 2 March 2023.
As set out in their judgment, the UK Supreme Court Considered the three issues as follows:
The third issue concerns the UKIPO’s default actions where no valid statement of inventorship is filed within the required time period. In such cases, the application is deemed withdrawn. This was the position of the Hearing Officer at the UKIPO in respect of these applications, after the UKIPO had held that Dr Thaler’s statement of inventorships as filed at the UKIPO in support of the applications were not valid, as they did not designate a human inventor.
In their judgment, the Supreme Court decided that, in line with the UK Patents Act and their interpretation thereof, DABUS could not be considered an inventor.
In considering the first issue of the appeal, the Supreme Court agreed with the UKIPO’s initial decision (and the decisions of the High Court and Court of Appeal) that DABUS is not a natural person. This therefore precludes DABUS being named as an inventor in respect of a patent application.
The Supreme Court went on to consider that the decision that DABUS could not be an inventor means that there is necessarily no invention in respect of these applications – without an inventor there can be no invention.
The UK Patents Act requires that any person who is to receive a grant of a patent must themselves be an inventor or must have a valid right to the patent stemming from an inventor (such as being assigned the rights to the patent by the inventor/s).
In this case, as DABUS is not an inventor, there can be no path through which Dr Thaler could obtain the rights to the patent.
Finally, in considering the third issue, the Supreme Court held that the hearing officer was correct to hold that the applications were deemed withdrawn, on account of Dr Thaler’s failure to name a natural person as inventor.
This decision sets a firm precedent, in that AI machines cannot be named as inventors for UK patent applications. In cases where the only named inventor is an AI machine, then there is no inventor, which means the application cannot proceed to grant, as the formal requirement to file a statement of inventorship can never be fulfilled.
As mentioned above, there are several similar DABUS cases ongoing in various jurisdictions, as Dr Thaler seeks legal clarity on whether AI machines can be named as inventors. We shall keep you up to date on these cases as any developments occur. If you have any questions about the decision or for any further information about protecting your intellectual property get in touch to speak to one of our attorneys.