Can an AI Machine be an Inventor for the Purpose of UK Patent Applications?

This interesting and highly topical question was finally answered and settled by the Supreme Court in the case of Thaler -v- Comptroller General of Patents Trade Marks and Designs after years of legal wrangling, and the answer is no.

Background

Dr Thaler submitted two patent applications to the UK Intellectual Property Office (UKIPO) under which his AI machine named DABUS was listed as the inventor. Dr Thaler claimed that his ownership of DABUS gave him the right to pursue a patent application for the invention.

However, the UKIPO officer reviewing the applications considered that the Patents Act 1977 required Dr Thaler to identify a human being as the inventor and to show how he had obtained his right to be granted the patent from that person. Because Dr Thaler could not evidence either of these things, the requirements of the Patents Act were not satisfied, and his applications were therefore withdrawn.

The High Court, the Court of Appeal and most recently the Supreme Court have subsequently considered the point and ruled against Dr Thaler upholding the decision of the UKIPO officer.

These decisions have therefore made it clear that the current UK patent system cannot accommodate or recognise an AI machine as an inventor.

Why Is This Important?

There have been many cases of the current UK patent system being systematically misused by, for example, allowing the grant of patents to applicants who have no intention of ever implementing the invention. This has typically been done in the hope that someone will subsequently create the invention and have to pay a fee to use the pre-existing patent.

Allowing AI to assist with this arguable abuse of the patent system would potentially have the effect of stifling true creativity and denying genuine inventors credit and statutory protection for their innovative work.

However, the Thaler case has highlighted that the current UK patent system may need updating given the pace of technological advances in the field of AI, particularly where there is an increasingly vocal opinion to allow AI machines to be granted patents in the future. However, any legislative changes to patent law may also need to strike the right balance between embracing technological advances and deterring the misuse of the patent system by disallowing large numbers of applications, perhaps assisted by AI, with the sole aim of selling or licensing the patent for a profit.

Conclusion

With the incredibly rapid advances being made in the field of AI, it remains to be seen how future intellectual property protections may be impacted, but the Thaler case has resolved one principal point, at least for now. It really is very much a case of watch this space to see how things may unfold in the future.

How Can We Help?

The Corporate and Commercial team at Wilson Browne Solicitors is ideally placed to advise on all aspects of protecting intellectual property rights, however arising. For a confidential and no obligation initial discussion about how we may be able to help, please contact the Corporate and Commercial team at 0800 088 6004.