22 September 2021
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On 21 September 2021, the UK Court of Appeal rejected an appeal raised by Dr. Stephen Thaler, who has been seeking to patent inventions that he claims were derived from an AI machine called 'DABUS'.

The judgement is actually a largely academic exercise that focuses on the interpretation of various statutory provisions. All three judges were unanimous that patent law in the UK requires an inventor to be a person, and therefore that DABUS could not be an inventor because it is a machine. This issue of whether any machine (AI-related or not) could in fact create an invention without human interaction was not explored because it was not germane to the issues in dispute.

At the heart of the appeal was the mechanism by which the UKIPO had refused Dr. Thaler’s applications, which was the statutory requirement to identify the inventor(s) and explain how the patent applicant derived ownership from the inventor. The judges were not unanimous here. 

The majority view was that Dr. Thaler failed to comply with the statutory requirement because no person was identified (naming DABUS as the inventor was not naming a person), and because no recognised rule of law for vesting ownership in the applicant was identified (there is no law that intangible creations of a machine become property of the owner of the machine).  However, Lord Justice Birss did not side with the majority. His view was that the UKIPO’s ability to assess validity of the information provided about inventorship is limited, and that the information provided by Dr. Thaler was enough to satisfy the formal requirements. 

So where does this leave us?

The result of the judgement is that the UKIPO are correct to object to applications that do not name a human inventor. It seems increasingly likely that a change in the wording of the statute would be needed in order to either recognise the contribution of an AI system or clarify which person should be deemed inventor where an AI system is involved in the creation of an invention. The judgement makes plain that had Dr. Thaler declared himself inventor on these cases, they would likely have proceeded through the system without a hitch.  So from a practical perspective, where inventions are made using AI-based tools, applicants remain well advised to name the humans involved in the project as inventors in order to obtain patents.

The judgement of Lord Justice Birss gives a view into an alternative universe in which patent applications naming AI systems as inventors can pass through the UKIPO but potentially be vulnerable to later attack on the grounds of entitlement. In this universe the battleground for AI-generated inventions would be focussed on who is entitled to own an invention rather than the nature of the inventor. It shows perhaps that there might be a path that enables the contribution of AI to be recognised, and indeed suggests the possibility that the existing rules on patent entitlement may provide a framework to ensure that AI-generated inventions end up with the correct ownership.

Read the full UK Court of Appeal judgement.

Read Richard's blog Inventive AI: can machines innovate? to learn more about other decisions in the USPTO, EPO and UKIPO which help give clarity on the applicability of current legal provisions to the recognition of artificial intelligence (AI) entities as inventors.

Richard has also discussed this topic in The Engineer and The Patent Lawyer.

Richard is a Partner and Patent Attorney at Mewburn Ellis. He is also our Chairperson and a member of our Management Board. Richard develops and manages IP portfolios for clients in the UK and abroad, contributing to and assisting in the formulation and execution of their IP strategies. Richard also handles patent prosecution at the European Patent Office and UK Intellectual Property Office for a wide range of clients.

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