UK High Court Reaffirms AI Cannot Be Inventor

The UK High Court has rejected the latest attempts to secure UK patent rights for an invention generated by AI system "DABUS". The Court confirmed that inventorship under the Patents Act requires a natural person to be named as an inventor. Where an AI system is named as the inventor, no person can be listed as the inventor instead.

This decision is the latest in Dr Stephen Thaler's long-running campaign to have his artificial intelligence-based machine, DABUS, named as an inventor on a patent application.

It follows the Supreme Court's 2023 judgment (reported here), which held that DABUS could not be an "inventor" because it is not a natural person, and Dr Thaler had no entitlement to a UK patent based on the activities of DABUS.

This High Court case is an appeal from a decision issued by Mr Andrew Bushell, acting for the Comptroller of the UKIPO. The High Court judgment confirms that UK patent law requires inventorship to be attributed to a natural person and that inventorship declarations are more than mere formalities. Once an applicant has clearly stated that an invention is devised solely by an AI system, they cannot reverse course and declare a natural person as the inventor.

The judgment concerns two applications: the parent application and the divisional application.

The parent application

The parent application is a UK national phase of Dr Thaler's international application, naming DABUS as the inventor.

The UKIPO required a Form 7 (statement of inventorship) within two months of national phase entry into the UK, by 2 October 2021. Instead of naming a human inventor, Dr Thaler pointed to the inventorship information already provided in the international phase.

After the 2 October 2021 deadline had passed, Dr Thaler filed an "auxiliary request" stating that no person was an inventor and that he was entitled to apply for a patent by virtue of Section 7(2)(b) of the Patents Act (entitlement by agreement, law or treaty).

In a decision issued 24 May 2022, the UKIPO held that the inventorship information provided did not comply with the provisions of the Act, and in any event, the "auxiliary request" was filed after the 2 October 2021 deadline had passed. The decision noted that although the Patents Act requires the UKIPO to treat inventorship information provided in the international phase as if submitted on a Form 7, it does not prevent it from examining whether the inventorship information complies with the provisions of the Patents Act.

The register was updated to state that the parent was terminated as of 25 May 2022.

The divisional application

Before the parent was officially recorded as terminated, Dr Thaler filed a divisional application. He repeated the position of the "auxiliary request" that there is no inventor, again citing Section 7(2)(b) of the Patents Act.

Following objections from the UKIPO, he filed further Forms 7: first, claiming there is no inventor and he is entitled to the invention as a "successor in title" under Section 7(2)(c) of the Patents Act, and later in December 2023 (after the Supreme Court judgment), naming himself as the inventor.

The UKIPO rejected these filings. Because the parent application was already deemed withdrawn for failure to file inventorship details in time, the divisional could not validly benefit from divisional status. In any event, Dr Thaler's final Form 7 was inconsistent with his earlier position that no human inventor existed. The divisional was therefore treated as withdrawn.

High Court judgment

The High Court upheld the UKIPO's decision on appeal. The judge confirmed that:

• The parent application was deemed withdrawn for failure to file a compliant Form 7 within the statutory period.
• As a result, the divisional was filed out of time and lost divisional status.
• Dr Thaler could not name himself as inventor in place of DABUS, having consistently maintained that no human inventor existed.

The penultimate paragraph of the decision notes:

"It may be that consideration should be given to whether provision needs to be made requiring an AI-generated invention to be identified as such (as the USPTO has done)."

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