AI as an inventor? Not (yet) in the UK, rules Court of Appeal

Mark Marfé and Sarah Taylor summarise and comment on the recent Court of Appeal on whether an AI can own or transfer patent rights

AI systems cannot own or transfer patent rights under UK law currently, the Court of Appeal in London has ruled.

The case before the Court of Appeal concerned an appeal raised by Dr. Stephen Thaler, who has been seeking to patent inventions that he claims were derived from an AI machine called 'DABUS'. The Court of Appeal found that only a person can be an inventor, and that as Dr Thaler accepts that he is not the inventor, he has no entitlement to the patent.  

However, there was a split in the judgment, with two of the three ruling judges – both leading authorities on UK patent law – in disagreement on the topic. This means that the UK Supreme Court is likely to be asked to rule on the core question of whether an AI system can be named as an inventor under UK law, and it could further expedite a change to UK legislation.

Dr Thaler has been arguing across several jurisdictions that the owner of AI systems should be the default owner of patents for inventions derived from those systems, and that it should be possible to name those AI systems as inventors on patent applications. The High Court ruled against Dr Thaler last September, upholding the position taken by a senior official at the UK Intellectual Property Office (UKIPO) in the process. The European Patent Office (EPO) also rejected Dr Thaler’s arguments last year, as did a district court in the US state of Virginia more recently. However, a parallel case about applications for the same inventions was decided in Dr Thaler’s favour in Australia, though it is now being appealed. An application corresponding to one of Dr Thaler’s UK patent applications has also been granted in South Africa.

In the High Court ruling, Mr Justice Marcus Smith held that the Patents Act 1977 provides that a person making a patent application must be a 'person' with legal personality, whether a human or corporation, and that a patent can only be granted to such a 'person' with legal personality. He determined that, because the inventor is by default the person entitled to the patent rights, it followed that existing legislation requires the 'inventor' to be a person with legal personality. The judge further held that, because patent rights are property rights, a machine is incapable in law of holding and transferring patent rights since it lacks the legal personality necessary to assign the rights to property or even hold those rights in the first place.

In his appeal, however, Dr Thaler asked the Court of Appeal whether the Patents Act does in fact require an inventor to be a person, what the purpose of section 13 of the Act is for and how it works, and what the right response is to the information he had provided under section 13(2) of the Act.

Section 13(1) of the Patents Act provides inventors with “a right to be mentioned” in any patent granted for the invention or in a published patent application for the invention, or otherwise “a right to be so mentioned in accordance with rules in a prescribed document”.

Section 13(2) of the Act requires patent applicants, when filing a patent application, to include a statement within their file identifying the person or persons who they believe to be the inventor or inventors; and indicating the derivation of his or their right to be granted the patent in circumstances where the applicant is not the sole inventor or the applicants are not the joint inventors. Where there is a failure to meet those disclosure requirements the application is to be taken to be withdrawn.

Core to the Court of Appeal’s ruling on Dr Thaler’s case was whether he could be said to have met the requirements of Section 13(2) simply by declaring in his statement that he believed DABUS to be the inventor. While Lord Justice Birss considered that the requirements of that section could be met with such a declaration because it was his “genuine belief”, Lord Justice Arnold and Lady Justice Laing disagreed.

Lord Justice Arnold said that it is “implicit” in the wording of Section 13(2) “that only persons can be inventors”. He said that DABUS did not qualify as an "inventor" within the meaning of the Act because it is not a person, and further considered that the UKIPO and High Court “were correct to hold that Dr Thaler is not entitled to apply for patents in respect of the inventions given the premise that DABUS made the inventions”.

Lord Justice Arnold said: “Dr Thaler did not identify ‘the person or persons whom he believes to be the inventor or inventors’ as required by section 13(2)(a). On the contrary, he deliberately identified a non-person as the inventor. The fact that he may genuinely have believed that DABUS was the inventor is neither here nor there. The answer he gave to the question was a legal impossibility… Nor did Dr Thaler identify ‘the derivation of his right … to be granted the patent’. He simply asserted that it was sufficient that he owned DABUS. As a matter of law, that is incorrect.”

Comment

Sarah Taylor 

It is still likely that, in order for a machine to be named as an inventor of a patent, legislative change is going to be needed.

Though there was an acknowledgement in the judgment that this dispute raised broad issues of global interest Lord Justice Arnold said that the court was bound to “apply the law of the United Kingdom … as it presently stands” and that its consideration of Dr Thaler’s case was “not an occasion for debating what the law ought to be.”

There has been much debate about whether the existing legislation is fit for purpose and can accommodate new technologies such as AI. Lord Justice Birss’ dissenting judgment is interesting. He found that the simple fact that this situation had not arisen before should not prevent the court from deciding how the law should be applied in a new situation, perhaps indicating that in some circumstances all that is needed is for the law to be applied in a more agile manner.

Despite this, based on the continuing debate and disagreement amongst the leading patent judges, we expect this matter to reach the Supreme Court. Ultimately the Court of Appeal’s decision has not changed much, and it is still likely that, in order for a machine to be named as an inventor of a patent, legislative change is going to be needed.

Mark Marfé  

This judgment provides clarity on the law of inventorship as it stands in the UK. Modern patent law is almost entirely a creature of statute and the Court of Appeal was unanimous as to the identity of an inventor under the Patents Act. As Lady Justice Laing made clear, if patents are to be granted in respect of inventions by machines, the Act will have to be amended.

In the spring, the UKIPO outlined plans to open a consultation before the end of the year on potential changes to the Patents Act 1977 that would make it possible to obtain a patent for an AI-generated invention in the UK. It said it would consider reform in this area "to ensure the intellectual property systems support and incentivise AI generated innovation", that there is "transparency in the innovation process", and that the patent "inventorship criteria do not present a barrier to protecting investment in AI generated innovation”.

This article is adapted from a post first published by Pinsent Masons via Out-Law News and is published here with permission.

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Mark Marfé is a Legal Director and tech patent litigator at Pinsent Masons who also advises on data commercialisation and AI often on projects with an ESG focus.

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Sarah Taylor is a Senior Practice Development Lawyer in the Pinsent Masons IP Group, specialising in patent litigation with experience in the life sciences and tech sectors

Published: 2021-09-24T14:20:00

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