27 September 2021

Part 1: UK Court Of Appeal Rules That An AI Cannot Be The Inventor On A Patent Application

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The Court of Appeal has issued a decision in an appeal against the High Court's decision to uphold the refusal of the Dabus patent application in the UK.
UK Intellectual Property
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The Court of Appeal has issued a decision in an appeal against the High Court's decision to uphold the refusal of the Dabus patent application in the UK. Agreeing with the both the UK IPO and the High Court, the Court of Appeal has ruled that an AI cannot be the inventor for the purposes of a patent application.

Dr Thaler invented the Dabus AI system to autonomously produce inventions and filed applications for its output in a number of jurisdictions. These applications listed Dabus itself as an inventor (as opposed to, or in addition to, a human inventor). In a fascinating divergence of practice across the world, Dr Thaler has had some success, with a patent granted in South Africa and a decision (now under appeal) in Australia that an AI system can be an inventor for an Australian patent, whereas in the UK, the US and before the EPO, the applications have been refused.

In the UK, the UK IPO found, and the High Court agreed, that Dr Thaler had failed to meet a requirement of section 13(2)(a) the Patents Act to "identify a person as the inventor." In the appeal against the High Court decision, Dr Thaler asked the Court of Appeal whether identifying a person really was a requirement.

In a 2-1 split decision, two of the Justices the Court of Appeal decided that section 13(2)(a) of the Act does require that a person be identified and that Dr Thaler had failed to do this because Dabus is not a person. In his dissenting opinion, however, Lord Justice Birss gives the view that section 13(2)(a) merely requires that a statement is filed indicating who is believed to be the inventor. In Lord Justice Birss' opinion, Dr Thaler met this requirement when he filed a statement indicating that "no person" was the inventor.

In view of the split decision, it seems likely that the Supreme Court will be asked to finally decide on whether an AI system can be an inventor for a UK patent given the current law. If, as seems most likely, the Supreme Court follows the Court of Appeal's reasoning, it will be down to Parliament to decide whether the UK's laws should be changed to accommodate AI inventors.

For the second part of our analysis, please click here.

The content of this article is intended to provide a general guide to the subject matter. Specialist advice should be sought about your specific circumstances.

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