In Thaler v Comptroller-General of Patents, Designs and Trade Marks [2023] UKSC 49, the UK Supreme Court ruled that AI cannot be an ‘inventor’ for the purposes of UK patent law. The ruling concludes a series of appeals from Dr Stephen Thaler and his collaborators, who argued that an AI system called ‘DABUS’ should be named as the inventor of two new inventions generated autonomously by it relating to food and beverage packaging and light beacons. This was part of a series of test cases, which have had limited success globally, seeking to establish that AI systems can make inventions and that the owners of such systems can apply for and secure the grant of patents for those inventions. The judgment noted that the broader questions of whether an invention generated autonomously by AI ought to be patentable, or whether the meaning of the term ‘inventor’ should be expanded to include machines powered by AI, were matters of policy that would need to be addressed by legislation.

The UK Supreme Court made three main findings.

1. DABUS is not an ‘inventor’ under the Patents Act 1977 (“Patents Act”)
3. An ‘inventor’ within the meaning of the Patents Act must be a natural person (a human being). Since DABUS is a machine, not a natural person, it cannot be an ‘inventor.’
5. It was not Dr Thaler’s case that he was the inventor and had simply used DABUS as a highly sophisticated tool. Had Dr Thaler made that case and named himself as the inventor, the Court noted that its decision might have been different, but it was not the Court’s place to determine that question.

2. Dr Thaler was not entitled to apply for and obtain a patent simply by virtue of his ownership of DABUS
4. Dr Thaler sought to rely on the doctrine of accession whereby the owner of existing property would own new property generated by that existing property (in the same way that a farmer owns the cow and also the calf). The Court held that this only applies to tangible property and not to intangible inventions. For this reason, title to the invention cannot pass as a matter of law from the machine that generated it to the owner of that machine. This argument also assumes that DABUS itself can be an inventor within the meaning of the Patents Act, which, as the court had already established, it cannot.

3. By failing to satisfy the requirements of the Patents Act, the two patent applications must be taken to have been withdrawn
5. Because Dr Thaler had failed to name an inventor and had failed to state a valid right to apply for and obtain the patents, the UK Intellectual Property Office had been correct to find that Dr Thaler’s two patent applications would be taken to be withdrawn at the expiry of the 16-month period prescribed by UK patent law for this purpose.

Commentary

Dr Thaler’s UK patent applications were part of a project involving parallel applications to patent offices around the world. The UK Supreme Court’s ruling is unsurprising and follows similar decisions in the United States and Europe.

The ruling raises significant issues for the AI industry, but it is important to focus on what it confirms: that inventors must be natural persons for the purposes of UK patent law. The judgment does not impact the patentability of AI-generated inventions as it does not necessarily preclude a person from securing a patent, provided that a human being is named the inventor.