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AI cannot be an 'inventor' but is reform on the horizon?

Posted on 15 October 2020

In the wake of the UKIPO's recent call for views on how the UK's IP framework caters for the development and wider use of artificial intelligence (AI) and the ongoing wider policy debate at a global level, the UK Patents Court has decided that AI systems cannot, as things currently stand within the scope of UK patent legislation, be acknowledged as an inventor.

The Court's decision in Stephen L Thaler v The Comptroller-General of Patents, Designs and Trade Marks concerning the 'DABUS' AI machine, focuses on the requirement that, pursuant to the UK Patents Act, an inventor is a 'natural person', but also (pending any appeal) highlights the potential need for reform. As well as the UKIPO, both the EPO and the USPTO have also refused patent applications based on DABUS as the inventor, with a number of other applications having been made on a worldwide basis.

Background

Dr Stephen Thaler filed two patent applications in his own name. However, he stated on Patent Form 1 (Request for Grant) that he was not an inventor of the inventions specified in the applications. Instead, Dr Thaler claimed on Patent Form 7 (Statement of Inventorship and Right of Grant to a Patent) that the inventor was an AI machine called 'DABUS' and that he had acquired the right to grant of the patents by "ownership of the creativity machine DABUS". It was common ground that DABUS was neither a natural nor a legal person.

The UKIPO had decided that the naming of a machine as inventor did not meet the requirements of the Patents Act 1977 because a person (i.e., a natural person and not merely a legal person) must be identified as the inventor, a decision which was upheld by the Comptroller of Patents.

Dr Thaler sought an appeal.

Decision

The policy debate

The Court recognised the importance of the debate about what the law should say about AI, but emphasised that this is a complex policy issue. The Court's role was only to construe legislation; it could not itself legislate, no matter how great the policy need.

The inventor can only be a natural person under the Patents Act

The Court reviewed the relevant provisions in the Patents Act as well as important case law authority, such as the House of Lords' decision in Yeda v Rhone-Poulenc. In particular, section 7 provides that:

  • Any person may make an application for a patent (s.7(1)).
  • A patent for an invention may be granted primarily to the inventor/joint inventors, though this can be overridden e.g., in an employment context or where the invention is assigned (s.7(2)).
  • 'Inventor' means the 'actual deviser of the invention' (s.7(3)).

The Court concluded that the term 'inventor' was limited to natural persons only. In particular, section 7 provided in mandatory and exhaustive terms, the circumstances in which a person may apply for, and be granted, a patent. There was powerful support both from the legislation and the case law for the 'inventor' to be the person who was the actual deviser of the invention, meaning the natural person who came up with the inventive concept.

Dr Thaler had expressly declined to advance the argument that, as the owner/controller of DABUS, he himself could be the inventor: he not only saw this argument as 'bad in law', but also morally thought this would illegitimately involve taking credit for the invention. However, the Court noted that this would not have necessarily been an 'improper' argument, and suggested it could be one advanced by an applicant in the future.

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