Supreme Court decides AI machine cannot be named as inventor

The heavily anticipated UK Supreme Court decision in the DABUS AI case was issued just before Christmas, finally putting to bed the question of whether an AI machine can be named as the inventor for a UK patent application.

This case concerns two UK patent applications for inventions that the applicant (Dr Thaler) claims were created by an AI machine known as a “device for the autonomous bootstrapping of unified sentience” (or DABUS, amongst friends), in the absence of a traditional human inventor. Dr Thaler is the sole owner, creator, and user of DABUS.

The first application relates to an interlocking food container based on fractal geometry that is easy for robots to grip and stack, and which can be rapidly reheated; and the second application relates to a flashing beacon for attracting attention in an emergency.

Both applications list DABUS as the sole inventor, which led to the following key questions in this case:

1. Does the UK Patents 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?
2. Does the UK Patents Act provide for the grant of a patent without a named human inventor?
3. 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?

A history

Back in December 2019, the UK Intellectual Property Office (UKIPO) issued an original decision refusing to accept the designations of DABUS as the inventor on the ground that DABUS is not a “person”, referencing section 13(2) of the UK Patents Act.

Dr Thaler’s initial appeal of that UKIPO decision was dismissed by both the High Court and the Court of Appeal, with the latter decision stating that the Court “must apply the law as it presently stands” and that the case was “not an occasion for debating what the law ought to be”. In short, although the current law was established without the fast-developing world of AI in mind, the Court of Appeal was unable to adapt the law.

Dr Thaler had also filed corresponding patent applications in numerous other territories, including Europe, Germany, the US, South Korea, Australia, New Zealand, Israel and South Africa, and those jurisdictions had all debated the same issues independently.

Interestingly, the same outcome was reached in all of those jurisdictions, with the exception of South Africa, where the patent applications were granted. However, this anomaly has generally been attributed to the much less arduous nature of the South African patent examination process, and there is a widespread assumption that eventually the South African decision will either be appealed, or the patents will be revoked.

As a result, in a final attempt to succeed, Dr Thaler appealed to the UK Supreme Court – in the hope that, unlike the Court of Appeal, the UK Supreme Court could (and would), take the chance to progress the law in this area.

Observations

First and foremost, this decision probably shouldn’t come as a surprise. It follows established principles that UK courts will rarely stray beyond the ordinary meaning of words, whether in legislation or in contract, and is also in keeping with the decisions in (most) other jurisdictions.

Some had, however, hoped that this case offered a chance for the UK’s patent laws to be updated to reflect the technological advancements that have occurred since the UK Patents Act was introduced nearly 50 years ago.

Nonetheless, reflecting on what might have happened had the decision gone the other way, this would, undoubtedly, have raised a number of further legal questions. For example, in the UK, ownership of an invention will naturally pass from an employee to employer provided the invention is made in the course of the employee’s normal, or specifically assigned, duties and the invention could be reasonably expected to result from those duties.

If an AI machine can be deemed a “person” in terms of inventorship, will ownership of the patent naturally pass to the owner of the machine, or to the employer of the owner of the machine? Will the owner of the AI machine need a contract of employment with the AI machine for ownership of the invention to pass naturally from the AI machine to the owner? In such event, is the AI machine deemed enough of a “person” to be capable of entering into a contract?

Perhaps thankfully, the UK Supreme Court has decided not to go down that road. However, given the rising prominence of AI in our day-to-day lives, it is surely only a matter of time before we see similar issues resurface.