UK Court Rules that AI “Invention” Isn’t Patentable

The UK Supreme Court has ruled that inventions developed solely by artificial intelligence (AI) may not be granted patent protection.

In 2018, Dr. Stephen Thaler filed UK patent applications for a new kind of food or beverage container and for a new kind of light beacon to be used for attracting attention in an emergency.

The container and beacon were “invented” by DABUS (Device for the Autonomous Bootstrapping of Unified Sentience), an AI tool created by Thaler to create new products. DABUS itself is patented by Thaler, who calls it his “creativity machine.” He describes it as “a collection of source code or programming and a software program.”

Thaler’s attempt to register the patents was refused by the UK's Intellectual Property Office (IPO). He appealed all the way to the UK Supreme Court.

As the court noted,

Neither application designated a human inventor, and no separate document designating a human inventor was ever filed. Instead, the request for grant forms accompanying the applications stated that Dr Thaler was not an inventor of the inventions described in the applications.

The court discussed how it’s not uncommon or improper for a person who is not an inventor to apply for a patent for an invention. For example, a business entity may apply for patents based on inventions made by employees in the scope of their employment.

However, what Thaler’s trying to do is different. He’s claiming the right to file and obtain patents for the work of DABUS because he owns DABUS.

As the court explained,

These two applications are part of a project involving parallel applications by Dr Thaler to patent offices around the world. As the Court of Appeal explained, Dr. Thaler and his collaborators seek 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.

Thaler has been mostly unsuccessful in seeking patent protection for the DABUS “inventions.” His patent applications have been rejected in Australia, the US, and New Zealand, as well as by the European Patent Office (EPO).

The US Court of Appeals for the Federal Circuit held that the United States Patent and Trademark Office (USPTO) properly concluded that the US Patent Act defines “inventor” as “limited to natural persons; that is, human beings.”

The US Supreme Court declined to hear Thaler’s appeal of the Federal Circuit’s decision.

Only South Africa has thus far accepted the DABUS application – the first patent granted for an AI-generated invention.

In the UK, Section 7 of the 1977 Act deals with the right to apply for and obtain a patent:

Right to apply for and obtain a patent.

(1) Any person may make an application for a patent either alone or jointly with another.

[Emphasis added.]

The Act continues:

A patent for an invention may be granted—

(a) primarily to the inventor or joint inventors;

The Act defines “inventor” as “the actual deviser of the invention.”

The court explained that

Any applicant, if not an inventor, is required to identify the person or persons whom he believes to be (rather than who is or are) the inventor or inventors; and where the applicant is not the sole inventor and, in the case of two or more applicants, they are not the joint inventors, to indicate the derivation of his or their right to be granted the patent. Here, too, any applicant (not being the inventor) is required simply to indicate rather than establish the derivation of that right.

The court noted that this is a low bar.

The court found that the UK Patent Act is clear:

The structure and content of sections 7 and 13 of the Act, on their own and in the context of the Act as a whole, permit only one interpretation: an inventor within the meaning of the 1977 Act must be a natural person, and DABUS is not a person at all, let alone a natural person: it is a machine and on the factual assumption underpinning these proceedings, created or generated the technical advances disclosed in the applications on its own.

The court referred to the container and the beacon as “technical advances” rather than as inventions.

The court then turned to the issue of whether Thaler owned any patentable invention in any technical advance made by DABUS and was thus entitled to apply for and obtain a patent for that advance.

The court concluded that he did not, partly because “DABUS, a machine with no legal personality, is not and has never been an inventor within the meaning of the 1977 Act.”

Said the court,

Section 7 does not confer on any person a right to obtain a patent for any new product or process created or generated autonomously by a machine, such as DABUS, let alone a person who claims that right purely on the basis of ownership of the machine.

The court cited the opinion of the Court of Appeal, which said,

Whether or not thinking machines were capable of devising inventions in 1977, it is clear to me that Parliament did not have them in mind when enacting this scheme. If patents are to be granted in respect of inventions made by machines, the 1977 Act will have to be amended.

Reuters reported that Thaler’s lawyers said in response to the decision that it

establishes that UK patent law is currently wholly unsuitable for protecting inventions generated autonomously by AI machines and, as a consequence, wholly inadequate in supporting any industry that relies on AI in the development of new technologies.

A spokesperson for the IPO responded that there are "legitimate questions as to how the patent system and indeed intellectual property more broadly should handle such creations" and that the British government will keep this area of law under review.

The decisions against Thaler don’t prevent human inventors from using AI to create inventions that can be patented in the name of a human inventor.

Categories: Patents