Supreme Court Rules AI Cannot Be Recognized as Inventor in Landmark Patent Law Case

Citation: [2023] UKSC 49
Judgment on

Introduction

The UK Supreme Court case of Thaler v Comptroller-General of Patents, Designs and Trade Marks [2023] UKSC 49 explores the boundaries of inventorship in the context of artificial intelligence (AI) within the purview of patent law. This case scrutinizes whether an autonomous AI system can be recognized as an inventor under the Patents Act 1977 and, if not, whether the owner of such an AI system has the legal right to patent creations made by the machine.

Key Facts

Dr. Stephen Thaler filed patent applications for inventions purportedly created by DABUS, an autonomous AI machine. Dr. Thaler was neither named as an inventor nor did he name any other human as such; instead, he claimed that the machine itself was the inventor and that, as the owner of DABUS, he was entitled to the patents. The Comptroller-General of Patents found the applications to be effectively withdrawn due to failure to comply with sections 7 and 13 of the Patents Act 1977. The High Court and Court of Appeal upheld the Comptroller’s decision, prompting an appeal to the Supreme Court.

The case delved into several critical legal principles underpinning patent law:

  1. Definition of Inventor: Section 7 of the Patents Act 1977 specifies that the inventor must be the “actual deviser” of the invention, thus necessitating a natural person.
  2. Right to Apply for Patents: The Act stipulates that patents can primarily be granted to the inventor, with provisions for others through specific legal entitlements, such as employment relationships or succession.
  3. Compliance with Patent Application Requirements: Section 13 mandates that the patent applicant must identify the inventor and the derivation of their right to be granted the patent.
  4. Doctrine of Accession: Dr. Thaler attempted to draw upon this doctrine by analogy, suggesting the owner of a machine generating new property also owns any resultant intellectual property.

Outcomes

The Supreme Court unanimously held:

  • DABUS, being a machine, does not qualify as an inventor under the Patents Act 1977 and thus, cannot be cited as such in a patent application.
  • Dr. Thaler, solely as the owner of DABUS, does not fall within any category under section 7(2) that would entitle him to be granted a patent for the AI-generated inventions.
  • The doctrine of accession does not apply to the intangible property (inventions) generated by a machine.
  • As a result, Dr. Thaler’s failure to comply with section 13(2) meant that his patent applications would be considered withdrawn.

Conclusion

In Thaler v Comptroller-General of Patents, Designs and Trade Marks, the Supreme Court espoused a strict interpretation of the Patents Act 1977, emphasizing that the concept of an inventor is confined to natural persons. This case underscores the Act’s limitations in addressing advancements in AI and autonomous invention, reinforcing that legislative changes would be necessary to accommodate the evolving landscape of intellectual property rights in the era of AI.

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