Written by: Sarah Turner, Liam Blackford, Bridie Barton
On 20 December 2023, the UK Supreme Court handed down its long awaited judgment in Thaler v. Comptroller-General of Patents, Designs and Trademarks, dismissing Stephen Thaler’s appeal and upholding the decision of the Court of Appeal.
While the result is not surprising, this decision is likely to be influential beyond the UK. This is one of a number of test cases brought by Dr Thaler around the world and it raises issues of some importance. So far, all but one of the patent offices and courts which have considered the issue have dismissed Dr Thaler’s case. While the UK case hinged on the interpretation of certain sections of UK patent legislation and whether a machine could be validly named as an inventor under those sections, as the role of AI in innovation increases, the debate will continue as to whether the law needs to be revised and who should be named as an inventor for inventions generated solely by AI. Israeli companies with business in the UK should be aware of this judgement and how it may impact current and future uses of AI in innovation.
The case concerns two patent applications submitted to the UKIPO by Dr Thaler. In both applications, the Applicant did not designate himself as the inventor, but stated that the inventor was an AI machine named ‘DABUS’ of which he was the owner. In 2019, the UKIPO refused the applications and deemed them to be withdrawn, on grounds that the Applicant (i) had not named a person as inventor, and (ii) had not established his right to apply for and be granted the patents.
The Applicant appealed to the Patents Court, which dismissed the appeal in 2020. The Applicant then appealed to the Court of Appeal, which also dismissed the appeal. The Applicant was granted leave to appeal to the Supreme Court. The court heard the appeal on 2 March 2023 and gave judgment on 20 December 2023.
THE SUPREME COURT’S JUDGMENT
In dismissing the Applicant’s appeal, the Supreme Court held that:
- The Court of Appeal, the Patents Court, and the UKIPO were all correct that s 7 of the UK Patents Act 1977 requires that an inventor be a natural person. Therefore, an AI machine cannot be named as an inventor in a patent application.
- The Court of Appeal, the Patents Court, and the UKIPO were all correct that existing law did not entitle the owner of an AI machine to apply for a patent for an invention generated by the machine.
- As a result, the Applicant’s patent applications, which named DABUS as inventor, were rightly dismissed.
WAS THIS RESULT EXPECTED?
The Supreme Court’s judgment is as expected given the wording of the Act.
The decision is also in line with the approach taken by the majority of other IP offices and courts around the world where Dr Thaler has filed corresponding patent applications. In particular, the US, Europe (EPO) and Australia have all refused the Applicant’s applications on the basis that a human inventor was not identified.
The decision is also consistent with the UKIPO’s June 2022 updates to its Formalities Manual, which provide that an AI system cannot be named as inventor because an AI system is not a person, and failure to name a human person as inventor will result in withdrawal.
Does the decision mean that AI-assisted inventions cannot be patented in the UK?
A critical feature of this case and the Applicant’s corresponding cases elsewhere is the absence of a human inventor; the Applicant claimed that the inventor was DABUS and DABUS alone. So, this decision does not mean that inventions developed by humans using AI as a tool cannot be patented under UK law if they meet the statutory patentability requirements and name a human inventor.
On this, the UKIPO provided official guidance in September 2022,1 and a November 2023 High Court decision affirmed that inventions for AI systems do not necessarily fall into the statutory exclusion from patentability for computer programs.2
IS LEGISLATIVE CHANGE DUE?
The UK Government’s March 2023 white paper stated its intention to adopt a ‘pro-innovation’ approach to the regulation of AI, with the aim of becoming a world leader alongside China, the US and the EU. The Supreme Court’s decision does not impact this policy. The decision aligns with the requirement in most major jurisdictions for a human to be named as an inventor, and leaves open the possibility of patent protection for AI-assisted inventions.
However, as the uptake, application and potency of AI increases across almost all industry sectors, it is conceivable that the role of AI in R&D will become more than merely assistive, and that more and more inventions will be generated by AI systems without human intellectual input. While the Supreme Court’s decision forecloses patent protection for such inventions for now, this position may come under pressure in future.
In June 2022, the UKIPO published its response to a consultation into how AI should be dealt with in UK intellectual property law, including patent law. The UKIPO considered whether the definition of “inventor” should be expanded to include humans responsible for an AI machine, whether to allow an AI machine to be named as inventor, whether to remove the requirement to name an AI inventor, and whether there should be a new patent-like right to protect AI inventions. Ultimately, the UKIPO made the decision not to make any changes to patent law, on the basis that ‘there is no evidence that UK patent law is currently inappropriate to protect inventions made using AI’. However, in view of AI’s transformative and still as-yet untapped potential, this is unlikely to be the last time these questions are considered.
WANT TO KNOW MORE ABOUT DLA PIPER’S AI PRACTICE?
In September 2023, DLA Piper published the report “AI governance: Balancing policy, compliance and commercial value”, offering a practical perspective on AI governance, strategies, challenges and risks, based on original research among 600 leaders in a wide range of organizations across the globe.
1As of November 2023, the guidance has been temporarily suspended pending consideration of the judgment in Emotional Perception AI Ltd v Comptroller-General of Patents, Designs and Trade Marks  EWHC 2948 (ch). See the article by DLA Piper partner, Rebecca Lawrence, on this case, “Patentability of AI – A Legal Perspective on Emotional Perception”
2Emotional Perception AI Ltd v Comptroller-General of Patents, Designs and Trade Marks  EWHC 2948 (Ch)