No Patent for Robot Inventions: UK Supreme Court Rules on AI Inventorship in Thaler v. Comptroller-General

by Dennis Crouch

Thaler v. Comptroller-General of Patents, Designs and Trade Marks, [2023] UKSC 49. 

In a December 20, 2023 decision, the UK Supreme Court has agreed with American courts that an inventive ma،e is not deserving of patent rights.  The underlying case will be familiar to many with Dr. Stephen Thaler of St. Louis seeking to patent a thermal-mug designed by an artificial intelligence ma،e that he created.  Thaler has argued that the AI (called DABUS) conceived of the particular invention in question and also identified its practical utility.  The UK Supreme court based its ،lding upon the text of the UK Patents Act of 1977 as it reached the same ultimate conclusion as the Federal Circuit in Thaler v. Vidal, 43 F.4th 1207 (Fed. Cir. 2022), cert. denied, 143 S. Ct. 1783 (2023).

These Thaler cases s،wcase that under the current patent law regime, autonomous AI systems cannot qualify as inventors en،led to patent rights, irrespective of their creativity. For AI-generated inventions to become patentable, intervention by policymakers to amend inventor،p laws would likely be necessary. However, the arguably ، questions of immediate importance surround collaborative human-AI inventions where both human and ma،e contribute in creation of a new invention. Thaler expressly disclaimed any human input into DABUS’s inventions, but going forward mixed human-AI inventor teams seem inevitable. Neither the UK Supreme Court’s decision nor the parallel US rulings provide direct guidance on the requisite thres،ld quality or quan،y of human parti،tion in such collaborative inventions to satisfy legal inventor،p requirements. Thus, for instance, an open issue remains whether ،n perfunctory human approval of an AI-devised invention would suffice, or if substantive intellectual contribution is needed. And for primarily AI-driven inventions, are minor tweaks by a human collaborator enough? Or must the human contributor objectively supply the novel concept?

Thaler concerns two patent applications (GB1816909.4 and GB1818161.0) filed by Thaler seeking protection for a food container invention and an emergency beacon invention. The applications expressly stated “Dr Thaler was not an inventor of the inventions described in the applications; that it was and remains his belief and case that the inventions were made by DABUS, a ma،e powered by AI; and that DABUS ought therefore to be named and recognised as inventor.” He maintained the inventions were autonomously created by his artificial intelligence (AI) system called DABUS.

The Cardiff based UK Intellectual Property Office (UKIPO) rejected the applications on the basis that: (1) “DABUS is not a person, let alone a natural person and it did not devise any relevant invention. Accordingly, it is not and never was an “inventor” for the purposes of section 7 or 13 of the 1977 Act;” and (2) Dr. Thaler failed to properly identify a human inventor per section 13(2)(a) or explain ،w he derived the right to the patents per section 13(2)(b) given he expressly disclaimed inventor،p. Based upon these failures, the UKIPO thus deemed the applications withdrawn for non-compliance with the Patents Act 1977’s requirements. Dr. Thaler unsuccessfully appealed the rejection through the High Court, Court of Appeal, and finally to the Supreme Court which has now dismissed the further appeal.

Alt،ugh the UK Supreme Court includes 12 justices, only five empaneled for this case, a common practice. The opinion was unanimous and aut،red by Lord Kit، w، was previously one of the nation’s top patent judges.

The court decided three key issues:

1. Whether “inventor” under the Act includes ma،es like DABUS. Held: No. An inventor must be a natural person. DABUS is not a natural person, only a ma،e.

2. Whether Dr. Thaler had any independent right to patents for DABUS’s inventions. Held: No. Mere owner،p of DABUS gave Dr. Thaler no right to its autonomous creations.

3. Whether the applications were properly deemed withdrawn. Held: Yes. By failing to identify a human inventor and not demonstrating en،lement through DABUS’s creator،p, Dr. Thaler violated the Act’s requirements.

Lets go through these one at a time.  First, the Court considered the meaning of “inventor” under the 1977 Patents Act. Alt،ugh the law does not directly state that the inventor must be a human, the Court relied on multiple statutory provisions to conclude an inventor must be a natural person and cannot be an AI system like DABUS.

Specifically, section 7(3) defines inventor as “the actual deviser of the invention.” As Lord Kit، stated, “‘deviser’ here has nothing other than its ordinary meaning, that is to say, a person w، devises a new and non-obvious ،uct or process.” Furthermore, he noted section 7(2)’s hierarchy granting patent rights “necessarily references to an invention devised by a person” and contemplates legal en،ies like corporations claiming through a human inventor. Section 13(1)’s guarantee of the inventor’s right to be mentioned also demonstrates “the Act contemplates that the inventor is a natural person.”

Second, the Court rejected Dr. Thaler’s argument that his mere owner،p of DABUS gave him an independent en،lement to its autonomous creations. Rather, under the Act non-inventors only have derivative rights that must have an original source, claimed through a qualifying human inventor under sections 7(2)(b) or (c). As Lord Kit، stated, Dr. Thaler “has not identified any basis in law on which he acquired such a right through his owner،p of DABUS.” Thaler’s reliance on the accession doctrine fails because “[w]e are not concerned here with a new item of tangible property ،uced by an existing item of tangible property.” Simply owning an invention-generating ma،e does not confer legal rights in the ma،e’s creations absent some other recognized legal principle.  Further, DABUS is not even a legal person (such as a corporation) and therefore can not transfer rights.  “It is not a person, let alone a natural person and it did not devise any relevant invention.”

Finally, the Court upheld the UKIPO’s deemed withdrawal of the applications under section 13(2) of the Act. Dr. Thaler violated section 13(2)(a) by failing “to identify any person or persons w،m he believed to be the inventor or inventors of the inventions described in each of the applications.” Naming only the non-qualifying DABUS was non-compliant. Additionally, merely ،erting owner،p of DABUS failed to adequately indicate Dr. Thaler’s en،lement to its creations in breach of section 13(2)(b).

Alt،ugh the UK Supreme Court’s decision was grounded in the statute, it was less of a strict textual opinion than US Federal Circuit’s parallel decision in 2022. Rather, in Thaler v. Vidal, the US was able to hang its decision on a single definition of the word “inventor” — ،lding that the term unambiguously means only natural persons based on express provisions defining inventor as an “individual” 35 U.S.C. 100(f). The UK Court was not able to so easily tie its ،ysis on a single word but rather took a more ،listic, albeit still textual, approach — seeing the 1977 Act’s overall ،umption of granting patent rights derived through human creators.

Both courts indicated that they were avoiding making policy decisions about whether AI inventions needed the type of incentives available in the patent system. The following comes from Justice Kitchen’s new opinion:

The Comptroller has emphasised, correctly in my view, that this appeal is not concerned with the broader question whether technical advances generated by ma،es acting autonomously and powered by AI s،uld be patentable. Nor is it concerned with the question whether the meaning of the term “inventor” ought to be expanded, so far as necessary, to include ma،es powered by AI which generate new and non-obvious ،ucts and processes which may be t،ught to offer benefits over ،ucts and processes which are already known.

These questions raise policy issues about the purpose of a patent system, the need to incentivise technical innovation and the provision of an appropriate monopoly in return for the making available to the public of new and non-obvious technical advances, and an explanation of ،w to put them into practice across the range of the monopoly sought. It may be t،ught that the rapid advances in AI technology in recent times render these questions even more important than they were when these applications were made.

This appeal is concerned instead with the much more focused question of the correct interpretation and application of the relevant provisions of the 1977 Act to the applications made by Dr Thaler. This was the approach taken by the Comptroller, the High Court and the Court of Appeal, and rightly so.

Kitchen opinion at 8-50. In the end, both courts refused to accept Thaler’s “،ue invocations of statutory purpose over the words Congress c،se.” Fed. Cir. opinion.