Patent law and the Modern World – Can an AI system be an inventor?

DABUS and the UK Supreme Court

On 20 December 2023, the UK Supreme Court delivered its judgement that DABUS, the AI machine owned by Dr Stephen Thaler, cannot be an inventor of a UK patent application as an inventor must be a natural person. Secondly, simply being the owner of a machine that “makes an invention”, does not entitle you to file a patent application for and obtain a patent for the invention.

The court ruled that DABUS “..was not an inventor of any new product or process described in the patent applications. It is not a person, let alone a natural person and it did not devise any relevant invention. Accordingly, it is not and never was an “inventor” for the purposes of… [UK Law].”

The two patent applications in question were therefore refused as the statutory requirement to name an inventor had not been satisfied.

If UK patents are to be pursued and granted for AI-generated inventions, some way will have to be found to deal with this problem in the law.

There perhaps could have been a simple way to avoid the problem: Dr Thaler could have named himself as the inventor, i.e. the devisor of the invention. I write without any detailed knowledge of the facts of the invention or process by which it was created, and generative AI, as its name suggests, clearly does some generating. However, it would not seem to me too much of a twisting of language to say that a human that controlled and provided the training and inputs to an AI system can be thought of as devising the output. Whether or not if challenged down the line a court would have questioned Dr Thaler’s right to be named as inventor is an interesting question. Putting all this uncertainty to one side, it seems likely that the UKIPO would have accepted that the formal requirement had been satisfied if Dr Thaler named himself as inventor.

This case, to many appeared an attempt to test the law to see how far it would go in its interpretation of the statutory provisions relating to the concept of “inventor”. So, although there might be a subtle question to answer, i,e. “what is an inventor?”, in the end this case was more simple and the court did not choose, or need, to concern itself with such high ideas. The Supreme Court, and lower courts before it, was and are bound by the fact that UK patent law defines an inventor as human, and having an inventor is essential for a patentable invention.

Perhaps the law will one day change and allow for an AI system to be recognised as a joint inventor, or even allow the controller/creator/operator of the AI system to be named as the inventor. Such changes would have their own associated problems. However, the way the law currently stands, the judgement does not seem surprising.

This is the world as it is coming up against law written in an era in which the way the world now works could never have been predicted. This is not uncommon in the world of patents where technology moves on and the law, inevitably, is always stuck in the past. The exclusions from patentability of, say, certain types of software, is another good example. When most modern patent laws were first laid down, they were more about nuts and bolts inventions. Nowadays (and for the last decade or more) so much of the development and improvement in the world has been in the area of software. Courts in the UK and elsewhere have found ways to recognise certain types of software as patentable, even though many patent laws, read simply, say otherwise. Unless and until statutes change, perhaps courts will do the same with AI-generated inventions.

Full judgement can be found here.

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