The Supreme Court heard the final appeal of the DABUS UK court battle on 2 March 2023 regarding whether artificial intelligence (AI) can be named as the inventor of new patents.

Background

Dr Stephen Thaler, a computer scientist and inventor of AI machine DABUS has been involved in an ongoing legal battle to determine whether DABUS can be named as the inventor of two patent applications (GB18116909.4 and GB1818161.0).

Dr Thaler claims DABUS is the sole inventor of the two patents in question. The AI machine developed the inventions using artificial neural networks.

In a ruling by the UK Court of Appeal of September 2021 (Thaler v Comptroller General of Patents Trade Marks and Designs [2021] EWCA Civ 1374), it was upheld that an inventor could not be a machine and must instead be a ‘natural person’. The ruling was the third round of this patent battle lost in the UK by Dr Thaler.

However, the decision of the UK Court of Appeal was not unanimous; Lord Justice Birss dissented, with the view that Dr Thaler had ‘complied with his legal obligations’ by declaring whom he believed to be the correct inventor. Birss went on to state ‘the fact that the creator of the inventions in this case was a machine is no impediment to patents being granted to this applicant’.

The case was referred to the Supreme Court on appeal. On 2 March 2023, in front of a panel of five judges, the following points of law were addressed:

• Does section 13(2)(a) of the Patents Act 1977 (the “1977 Act”) require a person to be named as the inventor in all cases, including where the applicant believes the invention was created by an AI machine in the absence of a traditional human inventor?
• Does the 1977 Act provide for the grant of a patent without a named human inventor?
• In the case of an invention made by an AI machine, is the owner, creator and user of that AI machine entitled to the grant of a patent for that invention?

The appeal

Dr Thaler was represented by Prof. Ryan Abbott, a fellow member of the Artificial Inventor Project, and Robert Jehan in the final round of what has become a test case for patent law in the UK.

Prof. Abbott argued that section 13 of the 1977 Act did not prevent the grant of a patent having no human inventor as the Court of Appeal had found. Instead, Prof. Abbott argued that section 13 required identification of ‘the person or persons’ believed to be the inventor. Therefore, there is no requirement for the ‘person or persons’ to be human. Prof. Abbott went on to argue that there was no such requirement anywhere in the 1977 Act.

In retaliation, Dr Stuart Baran on behalf of the Comptroller General, submitted that the wording of section 13 should be given its ‘natural meaning’.

Furthermore, Dr Baran went on to acknowledge that although property rights exist in inventions, there is no rule of law which may allow Dr Thaler to derive the right of application and grant of a patent from DABUS.

When questioned as to why Dr Thaler, being the ‘natural person’ who created DABUS, had not been named as the inventor of the patent applications, Prof. Abbott declared that this would be factually inaccurate and therefore this would wrongfully give Dr Thaler moral rights.

Dr Baran countered that the Comptroller-General would accept the inventor in such cases as being the natural person responsible for the AI machine in line with the approach of the European Patent Office. The ‘natural person’ would then be able to give credit and name the AI machine in the specification.

Dr Baran acknowledged the increasing role of AI and the need for ‘difficult conversations’ relating to its widespread implementation. He went on to state, ‘if changes to the law are necessary, then it is for parliament to evaluate and make’.

Summary

In his closing statement, Lord Hodge acknowledged the current challenge posed by AI, not only to intellectual property law, but also to contract and tort.

Dr Thaler has applied for patents listing DABUS as the inventor in a number of jurisdictions including Europe and the US. He has been successful in similar cases brought in Australia and South Africa, whereby DABUS has been accepted as the named inventor of the two patent applications. However, it remains to be seen whether the UK will follow suit.

A decision is now pending and an eagerly awaited judgement will follow in the coming months. If you have any questions about the decision or for any further information about protecting your intellectual property get in touch to speak to one of our attorneys.