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UK Supreme Court confirms AI cannot be an inventor under UK patent law

Posted on 15 January 2024

The UK Supreme Court has dismissed Dr Stephen Thaler's appeal, unanimously ruling that a patent application naming an AI machine, rather than a natural person, as the inventor is invalid under the UK Patents Act 1977.

The UKSC did not question the factual accuracy of Dr Thaler's claim, namely whether AI is capable of autonomous invention, but rather considered whether AI can be an inventor under the meaning of the Patents Act. The judgment expressly leaves the broader debate of whether inventions made autonomously by AI should be patentable, and any arguments that the term 'inventor' should be expanded, to be addressed by policymakers.

Dr Thaler's patent applications seeking the legal recognition of AI as an autonomous inventor have tested the boundaries of patent law worldwide. So far, applications (and subsequent appeals) have been dismissed in a number of territories including the European Patent Office, and in the US, Australia, New Zealand, Germany, Taiwan, Israel, South Korea, Canada, Brazil, India, and now in the UK, albeit with variation in reasoning. The only successful outcome was obtained in South Africa, likely due to a limited examination of the patent applications (the grant may be revoked in the future).

We have previously written about the progress of Dr Thaler's case in the UK at its earlier stages:

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

Can an AI machine be named as an inventor on a patent application?

The UKSC decision

Dr Thaler sought patent protection for two creative outputs generated by an artificial intelligence machine named DABUS, of which he is the sole creator, owner, and operator. Intentionally taking the step of not putting himself forward as the inventor in the patent applications, Dr Thaler contended that (i) DABUS is the sole creator of the inventions and (ii) that he owns the rights in DABUS's outputs as its owner and user, which entitles him to make the patent applications.

The two main issues for the UKSC to decide were: (i) whether AI can be an inventor under the current patent regime and (ii) whether Dr Thaler owns the rights to and may patent the inventions produced by DABUS by virtue of being its owner and operator.

The meaning of 'inventor'

The decision confirms that the reasonable interpretation of the current law is that only a natural person may be an inventor. Specifically, the UKSC considered section 7 of the Patents Act, which defines inventorship and contains an exhaustive list of those who may apply for a patent.

Sections 7(1) and 7(2) grant the right to apply for and obtain a patent to any person who is either:

  1. the inventor or joint inventor (s7(2)(a));
  2. legally entitled to the whole property in the invention (the most common example being an employer and employee scenario, where the employer owns the employee's creative output) (s7(2)(b)); or
  3. any successor of those listed above (s7(2)(c)).

The UKSC concluded that the language of these provisions clearly implied that a 'person' is a natural person for the purposes of s7(2)(a) and a legal person for the purposes of applying for a patent under s7(2)(b), and that machine-devised inventions were not the intended subject matter of the legislation at the time of enactment.

Was Dr Thaler the owner of any invention made by DABUS and entitled to apply for and obtain a patent in respect of it?

Formalities of the application

Section 13(2) of the Patents Act requires a statement to be filed with the application delineating whom the applicant believes to be the inventor.

In contrast to the dissenting judgment of Birss LJ in the Court of Appeal, the UKSC confirmed that s13(2) requires the applicant to indicate a human whom they honestly believe to be the inventor. Since Dr Thaler explicitly disavowed that status and, despite his genuine belief in DABUS's autonomous inventive capabilities, no such human had been identified and the application could not be taken to have met the formalities set out in the legislation. Referring to the House of Lords' decision in Rhone-Poulenc Rorer International Holdings Inc v Yeda Research and Development Co Ltd, the UKSC reiterated that the approach was a sequential one. In the absence of a human inventor to form the foundation of an application, subsequent considerations of ownership in the invention and entitlement to a patent, such as in s 7(2)(b), become irrelevant.

The question of ownership

The UKSC rejected the 'owner of the cow owns the calf' argument advanced by Dr Thaler (based on the doctrine of accession). It ruled that Dr Thaler was not entitled to patent the outputs produced by DABUS by virtue of being its owner, as the outputs were not tangible property but concepts for new devices and thus fell outside the scope of the doctrine. The analogy to a relationship of employment was also held to be inapplicable.

Comment and implications

The UKSC ruled that Dr Thaler failed to fulfil the necessary formalities under the Patents Act and his application could thus be taken to be withdrawn.

The restriction of 'inventorship' to natural persons and 'personhood', depending on the context, to legal persons was a predictable and widely anticipated interpretation of the Patents Act. Indeed, broadening the first definition to include machines and other non-natural persons such as companies without a more detailed legislative basis may have posed a risk, shifting ownership and liability in problematic ways. Furthermore, allowing non-legal persons to apply for patents would raise difficult issues. While a company may incur liability by virtue of its legal personhood, an AI could not practicably be held liable for its acts and omissions, nor could it own property or enter into legal agreements. All the above, however, is true of a natural and legal person.

Of course, as the UKSC noted, had Dr Thaler put himself forward as the inventor, 'the outcome of these proceedings might well have been different'. A similar conclusion was reached by the German Federal Patent Court and the Australian Federal Court. The patentability of AI-assisted inventions is also highlighted in the 2022 UK Government response to the 2021 UKIPO Artificial Intelligence and IP: Copyright and Patents Consultation.

What remains legally untested is the extent of human intervention entitling the operator of an AI tool to claim inventorship. Does the mere recognition, by a natural person, of 'invention', by a machine, qualify that natural person as an 'inventor' within the meaning of the Patents Act 1977 or is some further intervention required?

The wider debate – calls for reform

The UK is the third largest AI market after the US and China, valued at over £16bn and predicted to grow to over £75bn in the next 10 years. AI is moreover a key component in the UK's innovation strategy, as highlighted by the AI White Paper published by the UK Government in 2023 and the recent AI Safety Summit, which we have discussed here.

While the UKSC reached the same conclusion as the majority of jurisdictions where Dr Thaler has tested DABUS patent applications, some commentators have expressed concerns that the current approach may deter AI-reliant businesses from the UK market and thereby hinder its projected growth, arguing that once AI reaches the stage where it is able to invent, such inventions should be patentable. In its response to the 2021 UKIPO consultation, the UK Government concluded that no changes to the current UK inventorship regime were in fact required, and that the regime provided sufficient protection for AI-assisted inventions. A recurring proposition in the Government's response explaining its legislative hesitancy was that this issue required a global shift in patent law, with the Government favouring international harmonisation over 'prematurely' forging a divergent legislative path. An early conceptualisation of the way forward may come this year from US policymakers, whom President Biden has tasked with producing guidance on AI and inventorship by August 2024 via a recent Executive Order.

The Government's response to the 2021 consultation, characterising AI tools as mainly assistive rather than fully autonomous, was of course published before the recent boom in generative AI engendered by the release of software like ChatGPT for public use. The ubiquity and rapid evolution of generative AI tools that may increasingly be capable of autonomous invention could well prompt a reconsideration of the UK's IP strategy in due course.

The UKSC decision should be seen in this wider policy context, with legislation being the appropriate forum for considering the patentability of AI-generated inventions. Whether this could be done by formally expanding the definition of inventorship to include human operators of AI or to AI itself, or by creating an entirely new IP right adjacent to the patent regime, remains to be seen.

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