UK Supreme Court to consider AI inventorship in ‘DABUS’ patent dispute

Out-Law News | 20 Sep 2022 | 3:33 pm | 3 min. read

The question of whether artificial intelligence (AI) systems can own and transfer patent rights under UK law is to be considered by the UK Supreme Court.

The issue is at the heart of a long-running dispute between US scientist and technologist Dr. Stephen Thaler and the comptroller-general of patents at the UK’s Intellectual Property Office (UKIPO).

Thaler has claimed that an AI machine he developed, known as ‘DABUS’, is responsible for a series of inventions. He has filed patent applications before the UKIPO seeking to patent those inventions. In those applications, Thaler has listed DABUS as the inventor, and argues that patent rights granted to DABUS should be assigned to him.

The UKIPO rejected Thaler’s patent applications and this decision was subsequently upheld by the High Court and then, in September 2021, the Court of Appeal.

In the High Court ruling, the judge, Mr Justice Marcus Smith, held that the 1977 Patents Act provides that a person making a patent application must be a 'person' with legal personality, whether a human or corporation, and that a patent can only be granted to such a 'person' with legal personality. He determined that, because the inventor is by default the person entitled to the patent rights, it followed that existing legislation requires the 'inventor' to be a person with legal personality.

Mr Justice Marcus Smith further held that, because patent rights are property rights, a machine is incapable in law of holding and transferring patent rights since it lacks the legal personality necessary to assign the rights to property or even hold those rights in the first place.

Two of the three judges who sat in the Court of Appeal proceedings, Lord Justice Arnold and Lady Justice Laing, agreed with the conclusions reached in the High Court, but there was a dissenting opinion expressed by the third judge, Lord Justice Birss. Thaler’s appeal concerned whether he could be said to have met the statutory patent filing requirements simply by declaring that he believed DABUS to be the inventor. Lord Justice Birss considered that the requirements of that section could be met with such a declaration because it was Thaler’s “genuine belief”.

Patent law expert Mark Marfé of Pinsent Masons said: “Although there was a dissenting opinion, the Court of Appeal was unanimous as to the identity of an inventor under the UK Patents Act. If patents are to be granted in respect of inventions by machines, UK law will have to be amended.”

The UK Supreme Court will now consider the arguments. Although no date has yet been set for the hearing, it is not expected to take place before 2024.

Thaler has been arguing across several jurisdictions that the owner of AI systems should be the default 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.

In April, some of Australia’s most senior judges and intellectual property (IP) law experts unanimously agreed that only a natural person such as a business or individual can be an inventor under Australia’s Patents Act and Patents Regulations.

Late last year, the European Patent Office Board of Appeal (EPO BoA) ruled that AI systems cannot be named as an inventor on a patent application because the designated inventor for a European patent application must be a person with legal capacity. In Germany, the Federal Patent Court reached a more nuanced position, ruling that the named inventor in a patent application must be a natural person, but that the AI system supposedly responsible for the underlying invention can be additionally named.

More recently, the US Court of Appeals for the Federal Circuit upheld (11-page / 125KB PDF) an earlier decision of the Eastern District Court of Virginia, which itself had previously affirmed a US Patent and Trademark Office’s decision that an inventor of a patent must be a natural person.

The Court of Appeals said there is “no ambiguity” on the issue in the wording of the US Patent Act. It said the Act “requires that inventors must be natural persons; that is, human beings”. Legal representatives for Thaler have said they plan to appeal the ruling.

Patent law expert Sarah Taylor of Pinsent Masons said: “In its earlier decision, the Eastern District Court of Virginia acknowledged that current US patent laws would need to be changed to accommodate AI inventors. Ultimately, patent laws will need to be amended and aligned on an international basis. While legislative change is expected to be slow, it is possible that the progress of the case before the UK Supreme Court, which may be the first supreme level court in the world to hear Thaler’s arguments, may prompt earlier international conversations. Indeed, this topic is expected to be discussed at the forthcoming sixth session of the WIPO Conversation on IP and Frontier Technologies, and developments in this space will continue to evolve,” she said.