Rapid Reaction: UK Supreme Court rules that AI systems cannot be named as an inventor for UK patent applications
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In a landmark decision the UK Supreme Court ruled this morning that the UK Patents Act 1977 requires an inventor to be a natural person and an AI system cannot be named an inventor. The judgment emphasises that whether inventions made without a human inventor ought to be patentable in future is a matter of policy which would need to be addressed through legislation.
What has the Supreme Court decided?
In 2018 Dr Thaler filed two GB patent applications naming the creativity machine "DABUS" as the inventor and stating that he was entitled to apply for the patents by virtue of his ownership of DABUS. The UK Intellectual Property Office (UKIPO) rejected the applications, deeming them withdrawn under section 13(2) of the Patents Act 1977. This section requires an applicant to identify the person believed to be the inventor and indicate the derivation of their right to be granted the patent. This decision was upheld by both the High Court and the Court of Appeal.
Following a one-day hearing in March 2023 the Supreme Court’s judgment today was given by recently retired IP specialist Lord Kitchin (with whom the other Lords agreed). The Court concluded that:
- As a matter of statutory interpretation, an inventor within the meaning of the Patents Act 1977 must be a natural person. DABUS it is not a person, let alone a natural person and it did not devise any relevant invention. As a result, it is not an inventor under the Patents Act.
- Dr Thaler was not entitled to apply for and obtain a patent in respect of any technical advance made by DABUS. The Patents Act provides a complete code for deciding entitlement to apply for a patent. The starting point of that code (and a fundamental premise of the Patents Act) is that there must be an inventor, and the inventor must be a person. Dr Thaler’s argument that his ownership of DABUS entitled him to apply for the patents under the doctrine of accession was found to be without merit. The doctrine of accession concerns new tangible property produced by existing tangible property and there was no principled basis for applying the doctrine to concepts for new and non-obvious devices and methods that are said by Dr Thaler to be generated autonomously by DABUS.
- The UKIPO was entitled to treat Dr Thaler’s applications as withdrawn on the basis he had failed to comply with section 13(2) of the Patents Act 1977 by identifying the person who he believed to be the inventor and how he derived his right to apply for the invention. While it was not the function of the UKIPO to investigate the correctness of an apparently genuine statement of fact by the applicant which indicates the derivation of his right to be granted the patent for which the application is made, the UKIPO was not powerless to intervene where that indication was obviously defective or insufficient. Dr Thaler had failed to identify any person who he believed to be the inventor and his claim regarding his entitlement…
