High Court rejects new bid over Thaler’s AI invention patent

The High Court has again had to consider whether an AI system can be credited with a patented invention in the latest instalment of a long-running challenge by technologist Stephen Thaler, dismissing his latest application.

In 2023 Dr Thaler had unsuccessfully tried to argue that his AI system DABUS (Device for the Autonomous Bootstrapping of Unified Sentience) could be named as an inventor of a patent under UK law. 

Thaler had originally applied for two patents: "Food Container", which concerned the shape of parts of packaging for food, and "Devices and Methods for Attracting Enhanced Attention", which is a form of flashing beacon.

Thaler said the inventions had been created by DABUS, arguing that the owner of an AI system should by default be the owner of patents for inventions derived from those systems, and that it should be possible to name those AI systems as inventors on patent applications.

His bid was rejected by the UK Intellectual Property Office (UKIPO), culminating in a series of appeals that reached the UK Supreme Court, which, in a landmark decision, ruled in December 2023 that, under the current legislation, only humans can be named as an inventor of a patent, not an AI system.

Now the High Court has dismissed Dr Thaler’s appeal against a UKIPO decision that rejected a divisional patent application of the parent patent applications previously before the Supreme Court. 

Judge Michael Tappin ruled against the appeal on the technical nature of the application, noting in his finding that it was not his place to rule on “whether provision needs to be made requiring an AI-generated invention to be identified as such”.

Mark Marfé, a patent expert at Pinsent Masons, said: “The judge made the point that this was not an occasion on which to embark on a discussion about what contribution is sufficient for a natural person to be an inventor of an AI-generated invention. Nor did the judge consider it appropriate to consider the US, German and Swiss materials adduced by Dr Thaler which arose in the context of different legislative schemes”.

“The judge’s decision instead focused on the question before the court: namely whether, on the materials provided by Dr Thaler to the UKIPO, his statement of belief that he is the inventor of the inventions in the divisional application is ‘obviously defective’ under the UK Patents Act. In that sense, the decision was concerned with similar administrative patent filing issues as the previous DABUS decisions,” he said.

The UKIPO initially rejected the divisional application because the parent application was deemed withdrawn because it did not name a person as the inventor, but instead named the AI machine. The Hearing Office also turned down Thaler’s request to name himself as the inventor on the divisional application.

Thaler appealed to the High Court and argued that at the time the applications were filed, the case law was not settled, and it was unclear whether AI could be designated as the inventor. However, he added he should be entitled to shift his belief as to who the inventor was in the wake of the Supreme Court ruling, and name himself as the inventor instead.

The UKIPO said it was legally impossible for Thaler to be named as the inventor because in the earlier proceedings he had consistently referred to DABUS as the deviser, and therefore inventor, of the invention, and the Supreme Court’s decision could not change that fact.

However, according to Sarah Taylor, a patent expert at Pinsent Masons: “Given the wider history of these proceedings, it would be remarkable if Dr Thaler chose not to appeal this decision. AI has evolved rapidly over the past few years, and although the government decided against changing UK patent law to account for AI-devised inventions following a consultation in 2022, the issue will likely need revisiting in the not too distant future.” 

She added that that “while these are UK proceedings, any change in patent laws will need to be aligned on an international basis, so it is pleasing to see the UK courts remaining at the forefront of these issues.”