AI - Ain’t an Inventor

The road has finally run out for Dr. Stephen Thaler and his Artificial Intelligence (AI) system, DABUS. The UK Supreme Court unanimously found that an AI system cannot be a named inventor on a patent application.

This case began in 2018 when Dr. Thaler filed patent applications directed separately to new food containers and an emergency beacon. When asked to designate the inventor for these applications, Dr. Thaler named DABUS the sole inventor and claimed ownership of the applications via his ownership of DABUS. The UKIPO refused to accept a non-person as an inventor and determined that Dr. Thaler was not entitled to own the patent applications simply because he owned the AI system. As a result, the applications were refused in late 2019.

Dr. Thaler unsuccessfully appealed the UKIPO’s decision to the High Court in 2020 ([2020] EWHC 2412 (Pat)) and to the Court of Appeal in 2021 ([2021] EWCA Civ 1374). In March 2023, the case was heard before the Supreme Court, whose unanimous decision ([2023] UKSC 49) to dismiss the appeal was published in December 2023.

The Supreme Court held that an “inventor” must be a natural person and that “DABUS is not a person at all”. This interpretation was based largely on sections 7 and 13 of the Patents Act 1977 and was also found to be consistent across other sections, such as that dealing with prior art disclosures by the inventor.

The Court also held that simple ownership of DABUS did not entitle Dr. Thaler to a patent for the “technical advances” the AI system made. The flow of rights in the Patents Act is predicated on inventions being devised by inventors, and as DABUS is not an inventor, it cannot produce any patent rights. Furthermore, patent rights only transfer automatically under certain circumstances, such as through an agreed contract or through employment. Dr. Thaler submitted that the Doctrine of Accession, which concerns the ownership of property produced by other property, for example, fruit from trees or calves from cows, gives him the right to own any IP arising from DABUS. The Court rejected this opinion, holding that the doctrine applies only to tangible property.

The decision of the Supreme Court is consistent with those made by the courts of the majority of other countries where Dr. Thaler has made the case for DABUS being an inventor. These include Australia, Germany, the USA, and South Korea. The European Patent Office also decided against DABUS as an inventor, but a European divisional patent application naming Dr. Thaler as the inventor is currently under prosecution.

The result of this decision bears consequences for all those experimenting with the possibilities of AI systems. The UK courts have made it clear that an AI system cannot be an inventor. Involving AI to help solve technical problems has the capacity to open a can of worms in relation to ownership of any IP, as well as the potential for issues around early disclosure of IP through inadvertent public disclosure.

If you have any questions or would like to contact our Patent department, please email us at mail@stratagemipm.co.uk.