This long-awaited decision of the Supreme Court of the United Kingdom ("Supreme Court"), which aligns with the prospects of the lower court's opinion, clearly asserts that an AI system is not eligible to be registered as a patent inventor. This ruling underlines that human participation is a pre-requisite for the establishment of patent rights.
Below we summarized highlights of this remarkable decision:
Background: What was the case about?
Dr. Stephen Thaler created an AI supported machine called "DABUS" which autonomously generates smart machines. Dr. Thaler, on October 2018, filed a patent application naming DABUS as the inventor for two specific creations: (i) an advanced food/beverage container and an (ii) emergency light system. He believed that since DABUS had created these inventions and he owned the machine, he was entitled to these patent rights.
Prior to examination of the Supreme Court, Dr. Thaler initially submitted a patent application for these innovations before the UK Intellectual Property Office ("UKIPO") under UK's Patents Act 1977 ("1977 Act"). The UKIPO rejected his application citing the lack of a human inventor, and subsequently dismissed his application. Following this dismissal decision, Dr. Thaler appealed to the High Court. However, the High Court denied the appeal by highlighting the absence of a human inventor. Dr. Thaler then escalated the matter to the Court of Appeal. Unfortunately, the Court of Appeal dismissed the case, ruling that DABUS could not be considered an inventor under the 1977 Act, as the Act required the inventor to be a natural person.
Evaluation: What did the Supreme Court consider?
After his patent application was dismissed, Dr. Thaler challenged the decisions of the lower courts and filed a case with the Supreme Court. The Supreme Court's decision centred on three key questions in light of 1977 Act:
- Can an AI be an "inventor"? The Supreme Court ruled that legal personality is necessary for patent eligibility under the 1977 Act. Therefore, DABUS cannot be considered an inventor.
- Can the owner of an AI system apply for a patent for an AI-generated invention? The Supreme Court underlined that the 1977 Act mandates a natural person as the inventor. Consequently, Dr. Thaler's argument fails because, despite his ownership of DABUS and his claims of eligibility to apply for DABUS's innovations, the law clearly requires the inventor to be human, so ownership of an AI system is not enough to qualify for patent protection.
- Is the UKIPO authorized to withdraw Dr. Thaler's application? Given the absence of legal personality for DABUS as an inventor and Dr. Thaler's lack of sufficient evidence to claim patent rights, the Supreme Court affirmed that the UKIPO's decision to withdraw the application was justified.
Conclusion: The Judgment of the Supreme Court
Considering the findings above, the Supreme Court affirmed that the lower court approach was reasonable in rejecting DABUS as a patent inventor and in not recognizing Dr. Thaler's patent rights. As a result, the Supreme Court dismissed Dr. Thaler's claims.
While the Supreme Court's decision is firmly based on the current statutory provisions, it highlights a significant gap in the protection of AI-generated inventions. This judgment suggests that, at least within the UK, a change in the law may be necessary to allow for the patenting of AI-generated inventions. Until such changes are made, a natural person's contribution is required for devising an invention that involves AI.
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