In brief:
- A patent application naming an AI machine, rather than a natural person, as the inventor will be deemed withdrawn under the UK Patents Act 1977.
- Machine ownership alone does not entitle you to inventions created by that machine.
- Patent applications will be deemed withdrawn for non-compliance with inventorship requirements under section 13(2) of the Patents Act 1977, irrespective of whether there is a dispute about the non-compliance.
AI and inventorship
Dr Stephen Thaler has become well known in the patent sphere for his global attempts to register patents for two inventions created by his AI machine, DABUS, and naming DABUS (rather than himself) as the inventor. In most jurisdictions, these applications have been refused; only South Africa has accepted one, likely due to basic formal application requirements.
We previously reported that, in December 2023, the UK Supreme Court had unanimously ruled (dismissing Dr Thaler's appeal) that a patent application naming an AI machine, rather than a natural person, as the inventor, amounts to deemed withdrawal of the application under the Patents Act 1977. The Supreme Court noted that, had Dr Thaler named himself as the inventor, the outcome might have been different.
Background
This case is an appeal from a UKIPO hearing officer's decision regarding a divisional patent application filed by Dr Thaler in May 2022, prior to the Supreme Court decision.
Dr Thaler applied for the divisional patent, initially stating on Form 7 that DABUS was the inventor, and that he was entitled to ownership because he owned DABUS. The UKIPO rejected the application as Form 7 did not comply with section 13(2) of the Patents Act.
Section 13(2) requires that, unless already provided, a patent applicant must, within the prescribed period, file a statement with the following, otherwise their application will be deemed withdrawn:
- The person(s) whom they believe to be the inventor(s); and
- If they are not the sole or joint inventor, the derivation of their right to be granted the patent.
Dr Thaler then filed an amended Form 7, again listing DABUS as the inventor, stating he did not believe he was the inventor under the Patents Act, but that his right to own the patent derived from being a successor in title to it.
Two days after the Supreme Court decision, Dr Thaler submitted a third Form 7, this time naming himself, not DABUS, as the inventor. However, he stated: "The inventions disclosed in this application are AI-generated inventions, which were conceived autonomously by DABUS and Dr Thaler is the owner of DABUS". He also added: "Dr Thaler nevertheless submits he is not an inventor under traditional criteria."
The application was again rejected following a UKIPO hearing, prompting Dr Thaler to appeal.
The High Court decision (on appeal from the UKIPO)
The Court dismissed his appeal.
- Validity of changed inventorship statement
The court found Dr Thaler's claim to be the inventor in his third Form 7 "obviously defective" given his previous consistent statements that no natural person was the inventor. Furthermore, Dr Thaler admitted he was not an inventor 'under traditional criteria' so the court held this could only mean "his contribution was not such as to qualify him as a co-inventor".
Dr Thaler argued he changed his position after the Supreme Court decision because his understanding of the law had changed. This argument was rejected, as the Supreme Court decision simply confirmed existing law.
Dr Thaler also claimed he should not be treated less favourably because he had opted to be transparent from the outset. The court accepted that, had he simply named himself as the inventor without disclosing the invention was AI-generated, he likely would not have faced objection, but was not persuaded by this argument. Dr Thaler’s previous honesty (albeit of course as part of his wider approach that AI should be classed as an inventor) was effectively his downfall.
- Derivation of rights
The court also held that the statement regarding derivation of rights contained in the third iteration of the declaration of ownership did not comply, since owning a machine does not entitle someone to inventions made by that machine.
- Timing of deemed withdrawal
The court addressed whether a patent application is deemed withdrawn immediately upon expiry of the prescribed period for compliance with section 13(2) (ex tunc effect) or only when a decision is made confirming non-compliance (ex nunc effect).
It ruled in favour of the ex tunc approach, finding that applications are deemed withdrawn automatically upon expiry of the prescribed period if the requirements are not met, regardless of when the UKIPO makes a formal decision.
Takeaways
While the UK continues to maintain a strict position that only natural persons can be inventors, this case highlights the challenges for applicants seeking protection for AI-generated inventions:
- Transparency vs strategy - the court mentioned obiter that "consideration should be given to whether provision needs to be made requiring an AI-generated invention to be identified as such (as the USPTO has done)". Until this happens, applicants who name themselves as inventors without disclosing AI involvement may avoid objection.
- Invention documentation - it will be important to maintain clear records of human contributions to AI-assisted inventions.