Last year, the UK Intellectual Property Office (UKIPO) rejected two UK patent applications (GB1816909.4 and GB1818161.0) on the grounds of an invalid designation of inventor. The applications had been filed by Dr Stephen Thaler, who named his creation (the AI “DABUS”) as the inventor. The UKIPO’s decision was based on the conclusion that, under the UK Patent Act 1977, only a person (and not an AI) can be named as an inventor for a UK patent application. Dr Thaler appealed, but the High Court of England and Wales has now upheld the UKIPO’s decision.
Neither the UKIPO nor the High Court challenged Dr Thaler’s assertion that DABUS had actually “created” the inventions for which patents were sought. Indeed, the conclusions reached in the High Court’s decision were based on the assumption that DABUS is itself capable of an inventive concept. The question of whether an AI can actually invent, or whether it is merely a tool for invention, is therefore still unanswered. The focus of the High Court’s decision was instead on whether DABUS nevertheless met the definition of inventor within the meaning of the UK Patents Act 1977.
In the High Court’s decision, the Mr Justice Smith reviewed in detail the provisions of the UK Patents Act 1977, and concluded “the restriction of the term ‘inventor’ to natural person becomes inevitable” and that “DABUS is not, and cannot be, an inventor within the meaning of the 1977 Act, simply because DABUS is not a person” (sections 45 and 46 of the decision).
As set out in the decision, the status of inventor is key to questions of ownership and the right to be granted a patent. While a patent application may be owned by individuals or entities that are not the inventor, the right to be granted a patent is nevertheless derived from the inventor under Section 7 of the UK Patents Act 1977. The inventor must therefore be capable of having and transferring such a right. DABUS, in being a “thing” and not a person, cannot have or transfer rights, and therefore cannot be considered an inventor under the UK Patents Act 1977. Dr Thaler’s insistence that DABUS be named as inventor also led to an inability to demonstrate how he, as the applicant, derived his own right to be granted a patent based on the patent applications.
It is noteworthy that similar decisions have been reached on Dr Thaler’s applications before the European Patent Office and the US Patent and Trademark Office.
As a postscript to the decision, Mr Justice Smith did contemplate the question of whether the owner/controller of an AI that “invents” could instead be named as inventor. It was made clear that he did not consider such an argument “an improper one”. However, this line of argument was explicitly not pursued by Dr Thaler, so it was not considered in detail, nor was a conclusion reached.
Mr Justice Smith also emphasised that the role of the UKIPO and the Courts is to interpret and apply the law as it is, and not address what the law should be. The recognition of AI in all areas of law – and not just in intellectual property – is a question for the legislature. Legislation may be drafted in the future to cater for developments in AI, but for now it is clear that the High Court is in agreement with the current practice of the UKIPO – an AI cannot be named as inventor on a UK patent application.