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Uk Supreme Court Ai Patent

UK Supreme Court Rejects AI Patent Rights

Lindokuhle Mkhize

Lindokuhle Mkhize

21 December 20235 min read

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In a groundbreaking case that tested the boundaries of patent law, a US computer scientist named Stephen Thaler lost his bid to register patents for inventions developed by his artificial intelligence (AI) system called DABUS. 

On Wednesday, the UK Supreme Court unanimously rejected Thaler's appeal, ruling that under UK patent law, an inventor must be a natural person. This verdict has significant implications for the patent system and the role of AI in invention and innovation.

Thaler sought to secure two patents in the UK for inventions attributed to his "creativity machine," DABUS. However, the UK's Intellectual Property Office (IPO) denied Thaler's patent applications, arguing that inventors must be human or a company, not machines. The case was subsequently brought before the UK Supreme Court to challenge this decision.

As stated in the case document, "On 4 December 2019, the respondent handed down a decision refusing to accept the designations of DABUS as the inventor in the Applications pursuant to section 13(2) of the 1977 Act on the ground that DABUS being a machine is not a person, as envisaged by sections 7 and 13 of the 1977 Act. Dr Thaler's appeal of the respondent's decision was dismissed in the High Court and the Court of Appeal. He now appeals to the Supreme Court."

Court's ruling and implications

The UK Supreme Court's decision emphasized that the case did not delve into the broader question — should AI-generated technical advancements be patentable? Instead, it focused on the interpretation of existing law. These laws clearly stipulated that an inventor must be a natural person to obtain a patent.

According to Judge David Kitchin, the case's outcome hinged on three key questions:

1. The meaning of "inventor" under the 1977 Act: The Supreme Court justices have unanimously ruled that the legislation explicitly requires an inventor to be a natural person. DABUS, being an AI system, did not meet this criterion.

2. Ownership of the invention: Thaler claimed that as the owner and operator of DABUS, he should be entitled to apply for patents. However, the Supreme Court rejected this argument, stating that under section 7(2)(a) of the Act, an inventor must be a person, not a machine.

3. Withdrawal of patent applications: The court supported the decision of the Hearing Officer at the IPO, who determined that Thaler's applications should be withdrawn due to a patent dispute and the absence of a legal inventor.

press release shared by the UK Supreme quotes supports these reasons, "In all these circumstances, the Hearing Officer for the Comptroller was entitled to hold that Dr Thaler did not satisfy either of the requirements in section 13(2) of the 1977 Act:

he failed to identify any person or persons whom he believed to be the inventor or inventors of the inventions described in the applications [93];

his ownership of DABUS did not provide a proper basis for accepting his claim to be entitled to the grant of the patents for which he had applied [98]. "

However, the judgment does not exclude the possibility of individuals utilizing AI to aid in the invention process. In such cases, as long as a person is identified as the inventor, patent protection would still be available.

Implications for UK patent law

Thaler's lawyers argue that the current UK patent law is ill-suited for protecting autonomously generated inventions produced by AI machines.

Thaler's lawyers said in a statement that the ruling “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.”

They contend that this inadequacy undermines industries reliant on AI development. The UK Intellectual Property Office has acknowledged the need to address questions surrounding the patent system's treatment of AI-generated creations and intends to review this area of law.

Examples of similar cases:

The ruling reaffirms similar decisions by courts in Europe, Australia, and the United States, providing clarity that AI cannot be named as natural persons.

  1. European Patent Office v. Dr. Stephen Thaler: In a case similar to the UK Supreme Court ruling, the European Patent Office (EPO) also denied patent applications listing AI systems as inventors. Dr. Stephen Thaler, the same AI researcher, filed the applications with the EPO, arguing that AI should be recognized as an inventor. However, the EPO ruled that only natural persons can be considered inventors under the European Patent Convention.
  2. University of Surrey v. Imagination Technologies Ltd.: In a dispute involving AI-generated inventions, the University of Surrey filed a patent application listing an AI system as the inventor. The UK Intellectual Property Office rejected the application, stating that the AI system lacked the necessary legal personality to be recognized as an inventor. The case highlighted the need for clarity on AI inventors within the UK patent system.
  3. Thaler v. Commissioner of Patents: A similar case unfolded in Australia, where Dr. Stephen Thaler's patent applications, naming AI systems as inventors, were rejected by the Australian Patent Office. The decision was based on the interpretation of the Australian Patents Act, which specifies that inventors must be natural persons. This aligns with the rulings in the UK and Europe, underscoring the consensus among patent offices worldwide.

There's an increasing need for updated patent laws.

The UK Supreme Court's ruling solidifies the notion that AI machines cannot be designated as inventors under current patent law. While this decision does not significantly impact the patent system at present, it raises crucial questions regarding the future role of AI in invention and innovation. Policymakers and legal experts must consider amending patent laws to reflect evolving technologies and maintain a fair and effective intellectual property framework.

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Lindokuhle Mkhize, a skilled creative copywriter and content lead at Trademarkia, brings a wealth of experience in driving innovation and managing teams. With previous success in starting and growing the Innovation and Marketing department at her former creative agency, Lindokuhle boasts expertise in leadership and delivering compelling content. Based in South Africa, Lindokuhle's work focuses on key themes of creativity, effective communication, and strategic marketing.