In the landmark decision of Thaler v Comptroller-General of Patents, Designs and Trade Marks  UKSC 49, the UK Supreme Court has set a significant precedent in the realm of AI and patent law.
It addresses the critical issue of whether an artificial intelligence (AI) system can be recognised as an ‘inventor’ for the purposes of patent applications. This decision may have significant implications, especially for industries like life sciences and pharmaceuticals.
Supreme Court Decision
The core of the appeal revolved around two patent applications filed by Dr Stephen Thaler, where the alleged ‘inventor’ of the products and processes was an AI system named Device for the Autonomous Bootstrapping of Unified Sentience (DABUS). Dr Thaler contended that as the owner of DABUS, he was entitled to the patents. However, the UK Supreme Court unanimously held that an AI system cannot be recognised as an inventor under the current legislative framework of the Patents Act 1977 (the Act). The UK Supreme Court emphasised that an ‘inventor’ must be a natural person, and since DABUS, a non-human entity, created the inventions autonomously, it did not fit within the legal definition of an inventor.
Dr Thaler’s Argument
Dr Thaler’s argument to the UK Supreme Court can be summarised as follows:
- AI as Inventor: Dr Thaler contended that the inventions described in his patent applications were autonomously generated by an AI system named DABUS. He argued that as the owner of DABUS, he was entitled to apply for and be granted patents for these inventions.
- Challenge to Conventional Inventorship: Dr Thaler challenged the traditional notion that an inventor must be a natural person. He posited that an AI system, acting autonomously, could be recognised as an inventor under the Act.
- Rights Derived from Ownership of AI: Dr Thaler’s argument extended to the claim that, as the owner of the AI system DABUS, he had acquired the rights to the inventions it created. He argued that this ownership gave him the right to apply for and be granted patents.
- Compliance with Section 13(2) of the Act: Dr Thaler asserted that he had complied with the requirements of Section 13(2) of the Act. Specifically, he believed he correctly identified DABUS as the inventor and indicated his derivation of the right to be granted the patents due to his ownership of DABUS.
- Doctrine of Accession: Dr Thaler’s argument also touched upon the doctrine of accession, suggesting that as the owner of DABUS, he was entitled to the ‘fruits’ produced by the machine, akin to tangible property produced by tangible property.
- Appeal against Previous Decisions: Dr Thaler’s appeal followed decisions by the Comptroller, High Court, and Court of Appeal, which all concluded that the applications must be taken to be withdrawn. The basis for these decisions was that, according to existing law, the machine (DABUS) did not qualify as an inventor and that Dr. Thaler, consequently, could not derive the right to the patents merely through ownership of the machine.
Legal Framework and the Court’s Interpretation:
The UK Supreme Court’s examination of the role and status of DABUS in the Thaler v Comptroller-General of Patents, Designs and Trade Marks case is particularly insightful. DABUS, an artificial intelligence system, was at the heart of the legal debate.
The crux of the UK Supreme Court’s decision hinged on the interpretation of the term ‘inventor’ within the Act. The Act defines an inventor as ‘the actual deviser of the invention’. The UK Supreme Court emphasised that this language unambiguously refers to a natural person, thus excluding non-human entities like AI systems. This interpretation adheres to the traditional understanding of inventorship, which inherently links human intellect and creativity to the concept of invention.
The central legal issue was whether DABUS could be recognised as an ‘inventor’ under the Act. Dr. Thaler’s argument hinged on the idea that as the owner of DABUS, he should be entitled to the patents of the inventions created by it. The UK Supreme Court, however, held that under the current legal framework, an ‘inventor’ must be a natural person. Since DABUS is a machine and not a natural person, it cannot be considered an inventor within the meaning of the Act, with the UK Supreme Court stating at paragraph 56:
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.
The UK Supreme Court’s judgment underscores a human-centric approach inherent in the current patent system. It highlights that the patent system is designed around human inventors, recognising their contribution and granting them rights which can be legally transferred and exercised. This approach reflects the traditional view that inventions are the fruit of human ingenuity.
What if Dr Thaler had sought to name himself as the inventor?
The question must be considered that if Dr Thaler had positioned himself as the human inventor of the patents in question, utilising DABUS solely as a tool in the invention process, the legal trajectory and potential outcome of his case could have been markedly different. The UK Supreme Court’s interpretation is that only a natural person can be an inventor, and if Dr Thaler named himself as the human creator who employed DABUS as an instrumental aid, similar to a scientist using a computer for research, Dr Thaler’s approach could have aligned with the established legal norms of inventorship.
This compliance may have satisfied Section 13 of the Act, which necessitates the identification of a human as the inventor. In this alternate scenario, DABUS would be relegated to the role of a sophisticated facilitator in the creative process, rather than being perceived as an autonomous entity capable of invention, and the central legal argument would have been around whether Dr Thaler, by using such a tool, was the “actual deviser of the invention”, similar to issues we have seen in terms of copyright ownership of AI generated works in the USA.
Implications for Industry
This decision has significant implications, particularly for industries that heavily rely on AI for innovation, such as life sciences and pharmaceuticals. The decision implies that any invention autonomously generated by AI cannot be patented unless attributed to a human inventor. This could potentially slow down the pace of AI-driven innovation in these sectors, as organisations might be reluctant to invest heavily in AI research if the fruits of such labour cannot be legally protected. This decision necessitates a re-evaluation of the role of AI in the inventive process for such industries:
- Human Involvement in AI-Driven Research: The decision will likely lead to a renewed emphasis on documenting the human contribution in AI-assisted research. Companies will need to clearly delineate the role of human researchers in the development of inventions to satisfy patent application requirements.
- Strategic Intellectual Property Considerations: Organisations may need to strategise their intellectual property approaches, balancing AI’s role with human inventors to ensure patentability. This might involve restructuring research teams or processes to align with the legal requirements for patent filings.
- Innovation Pace and Investment: The decision could potentially influence the pace and nature of innovation in these industries. As AI-generated inventions cannot be patented without a human inventor, there may be a shift in how research priorities are set and how R&D investments are made.
This shift could increase costs and complexity in research and development, as companies would need to balance the integration of AI with the necessity of human involvement to secure patent protection.
On a broader scale, the decision reflects the current limitations of intellectual property law in keeping pace with technological advancements. It underlines the need for legislative reform to address the evolving landscape of AI-driven innovation. Until such legal reforms are introduced, AI systems like DABUS cannot be recognised as inventors, which could hinder the full exploitation of AI’s potential in critical sectors like life sciences and pharmaceuticals.
The UK Supreme Court’s decision in Thaler v Comptroller-General of Patents, Designs and Trade Marks establishes a clear legal precedent that AI systems cannot be recognised as inventors under current UK patent law. This decision has far-reaching implications, particularly in AI-intensive industries, underscoring the need for legislative evolution to accommodate the growing role of AI in innovation.