Supreme Court rules that patent applications must identify human inventors

The UK Supreme Court has ruled, in Thaler v Comptroller-General of Patents, Designs and Trade Marks [2023] UKSC 49 (20 December 2023), that an "invention" for the purposes section 7 of the UK Patents Act 1977 must have a human inventor. An artificial intelligence (AI) (or a non-human legal person) will not do. Without a human inventor, a patent cannot be granted, and no person can derive the right to apply for a patent under section 13 of the Act. A patent application not identifying a human person as the inventor must be taken to have been withdrawn.

The judgment is the final say of the UK courts on the question of whether Dr Thaler has the right to apply for patents on the basis of owning an AI (DABUS) said to be the inventor. The 1977 Act in its current form "does not confer on any person a right to obtain a patent for any new product or process created or generated autonomously by a machine, such as DABUS, let alone a person who claims that right purely on the basis of ownership of the machine".

However, what "generated autonomously" means, and whether the technical advances the subject of Dr Thaler's patent applications were in fact "generated autonomously" by DABUS, were not explored – Dr Thaler's appeal was pursued on the basis that that factual assumption was correct. It was not at any point Dr Thaler's case that he was the inventor and had used DABUS as a highly sophisticated tool. Lord Kitchin said ([52]):

"Had he done so, the outcome of these proceedings might well have been different."

The determination of a question of that sort will have to wait for another case, which means that the practical impact of the Supreme Court's ruling remains to be seen. In order for a patent to be granted, a human inventor must be identified in the patent application. The extent of contribution required of that person where AI has been employed in reaching the technical advance concerned is a question for another case. The Supreme Court held that "it is no part of the function of the Comptroller to examine the correctness of genuine and plausible statements of inventorship and entitlement under s.13(2) of the Act…", but we expect continuing debate over the patentability of inventions made using AI and potential challenges to pending and granted patents on the basis that the true inventor was an AI.

Background to the Thaler case reaching the UK Supreme Court

In 2018, Dr Stephen Thaler filed patent applications for a food or beverage container and a light beacon for attracting attention in an emergency. Neither application designated a human 'inventor', and no separate document designating a human inventor was ever filed. The statements of inventorship provided on prescribed forms reported Dr Thaler's belief that each of the inventions was created by the AI of a machine called DABUS and that Dr Thaler had acquired the right to the grant of the patents because of his ownership of that machine.

The UK Intellectual Property Office (IPO) issued a decision explaining that DABUS was not a person as envisaged by the Patents Act sections 7 or 13, and so was not an inventor. It followed that DABUS had no rights that could be transferred, nor power to transfer anything that it might have owned. Nor was Dr Thaler entitled to the grant of a patent on the basis that he owned DABUS. The applications were deemed to be withdrawn.

Dr Thaler's earlier appeals, to the Patents Court and then to the Court of Appeal, were unsuccessful. In the latter, the majority (Arnold LJ and Elisabeth Laing LJ) held that DABUS did not qualify as an inventor within the meaning of the 1977 Act because such an inventor was required to be a person; that there was no general rule of law that any intangible property (including an invention) created by a machine was the property of the machine or the owner of the machine; and that the Comptroller had been right to find the applications would be taken to be withdrawn because Dr Thaler had not identified the person or persons whom he believed to be the inventor or inventors; nor had he identified any proper basis for deriving a right to be granted the patents when he simply asserted, wrongly in law, that it was sufficient that he owned DABUS.

However, in the Court of Appeal, Birss LJ dissented. While he agreed with the majority that an inventor within the meaning of the Act must be the person who devised the invention, and so DABUS could never be an inventor, he did not think the point was determinative of the appeal. Birss LJ explained that the Act required the applicant to identify the person they believed to be the inventor and how they claimed to have the right to be granted a patent. He found that Dr Thaler's statement reflected his honest belief, and the Comptroller did not need to be satisfied that Dr Thaler's claim was a good and sound one. Birss LJ's view was that the fact that the creator of the invention was a machine was no impediment to the grant of a patent to Dr Thaler.

The issues

The Supreme Court determined three issues:

Issue 1: The scope and meaning of "inventor" in the 1977 Act.

Issue 2: Was Dr Thaler nevertheless the owner of any invention in any technical advance made by DABUS and entitled to apply for and obtain a patent in respect of it?

Issue 3: Was the Hearing Officer entitled to hold that the applications would be taken to be withdrawn?

The Patents Act 1977

Section 7 of the Patents Act provides:

"Right to apply for and obtain a patent

1. Any person may make an application for a patent either alone or jointly with another.
2. A patent for an invention may be granted—
   1. primarily to the inventor or joint inventors;
   2. in preference to the foregoing, to any person or persons who, by virtue of any enactment or rule of law, or any foreign law or treaty or international convention, or by virtue of an enforceable term of any agreement entered into with the inventor before the making of the invention, was or were at the time of the making of the invention entitled to the whole of the property in it (other than equitable interests) in the United Kingdom;
   3. in any event, to the successor or successors in title of any person or persons mentioned in paragraph (a) or (b) above or any person so mentioned and the successor or successors in title of another person so mentioned;
   and to no other person.
3. In this Act 'inventor' in relation to an invention means the actual deviser of the invention and 'joint inventor' shall be construed accordingly.
4. Except so far as the contrary is established, a person who makes an application for a patent shall be taken to be the person who is entitled under subsection (2) above to be granted a patent and two or more persons who make such an application jointly shall be taken to be the persons so entitled."

Section 13 of the Patents Act provides:

"Mention of inventor

1. The inventor or joint inventors of an invention shall have a right to be mentioned as such in any patent granted for the invention and shall also have a right to be so mentioned if possible in any published application for a patent for the invention and, if not so mentioned, a right to be so mentioned in accordance with rules in a prescribed document.
2. Unless he has already given the Patent Office the information hereinafter mentioned, an applicant for a patent shall within the prescribed period file with the Patent Office a statement—
   1. identifying the person or persons whom he believes to be the inventor or inventors; and
   2. where the applicant is not the sole inventor or the applicants are not the joint inventors, indicating the derivation of his or their right to be granted the patent; and, if he fails to do so, the application shall be taken to be withdrawn.
3. Where a person has been mentioned as sole or joint inventor in pursuance of this section, any other person who alleges that the former ought not to have been so mentioned may at any time apply to the Comptroller for a certificate to that effect, and the Comptroller may issue such a certificate; and if he does so, he shall accordingly rectify any undistributed copies of the patent and of any documents prescribed for the purposes of subsection (1) above."

Issue 1: The scope and meaning of "inventor" in the 1977 Act

Giving the sole reasoned judgment in the Supreme Court, Lord Kitchin explained that the structure and content of sections 7 and 13 of the Act, on their own and in the context of the Act as a whole, permitted only one interpretation: that an inventor within the meaning of the 1977 Act must be a natural person, and DABUS was not a person at all, let alone a natural person.

Lord Kitchin pointed to s.7(3), which provides that the "inventor" means the actual deviser of the invention, explaining that the ordinary meaning of this was of a person. This interpretation was consistent with the scheme of s.7 as a whole, and Lord Kitchin found "confirmation" of the interpretation in the decision of the House of Lords in Rhone Poulenc Rourer v Yeda R&D [2007] UKHL 43 (albeit in relation to an entitlement dispute). It was also consistent with other provisions of the Act: Lord Kitchin noted the protection conferred against prior publication in breach of confidence (s.2(4)), the power conferred on the Comptroller to decide questions of entitlement before grant (s.8), and the resolution of disputes of entitlement raised after grant (s.37), explaining that these provisions contemplated or were consistent with the proposition that the "inventor" is a natural person and that rights are derived through the inventor.

Accordingly, the Comptroller had been right that DABUS was not an "inventor" for the purposes of section 7 or 13 of the 1977 Act.

Issue 2: Was Dr Thaler nevertheless the owner of any invention in any technical advance made by DABUS and entitled to apply for and obtain a patent in respect of it?

Lord Kitchin explained that s.7 of the 1977 Act provided a complete code in respect of the right to apply for and obtain a patent. The starting point, under s.7(2)(a), was that there must be an inventor, and that inventor must be a person. DABUS was not.

Secondly, the applicant, if not the inventor, must fall within one of the limbs of s.7(2)(b), or alternatively be the successor in title to the inventor or any person mentioned in s.7(2)(b). Dr Thaler did not satisfy this. Section 7, as enacted, did not confer on any person a right to obtain a patent for any new product or process created or generated autonomously by a machine, let alone a person who claimed that right purely on the basis of ownership of the machine.

Section 7(2)(b) allows that the right to obtain a patent can be founded on a "rule of law". Dr Thaler relied on the doctrine of accession (e.g. that the fruits of a tree belong to the owner of the tree). The court found that this was "misguided" and suffered from "two fundamental problems". First it assumed that DABUS could itself be an inventor within the meaning of the 1977 Act. Second, the doctrine of accession only applies to tangible property and an invention is not tangible property. There was no principled basis for applying the doctrine of accession in the circumstances of this case, which concerned (what the court assumed to be) concepts for new and non-obvious devices and methods and descriptions of ways to put them into practice.

Accordingly, Dr Thaler never had any right to secure the grant to himself of patents made under the 1977 Act in respect of anything described in his applications.

Issue 3: Was the Hearing Officer entitled to hold that the applications would be taken to be withdrawn?

Lord Kitchin said that it was no part of the function of the Comptroller to examine the correctness of genuine and plausible statements of inventorship and entitlement under s.13(2) of the Act (and rule 10 of the Patents Rules 2007). Nevertheless, the Comptroller did have power to intervene where the indication provided was obviously defective or insufficient.

Dr Thaler had failed to identify any person(s) whom he believed to be the inventor(s) of the inventions described in his applications because DABUS was not a person. Nor did Dr Thaler's ownership of DABUS operate, as a matter of law, to provide sufficient basis for the UK IPO to accept Dr Thaler's application.

Accordingly, Dr Thaler did not satisfy either of the requirements in s.13(2) of the Act, and so his applications must be taken to have been withdrawn. This conclusion was the consequence of the existing rules. It did not impose an additional requirement for patentability, nor introduce a new ground for refusing patent applications.

Birss LJ's dissenting approach in the Court of Appeal, which would have recognised Dr Thaler's applications as compliant with sections 7 and 13 of the 1977 Act, was therefore rejected by the UK Supreme Court. That approach would have facilitated patenting of inventions made autonomously by AI machines. It was an approach that the Chartered Institute of Patent Attorneys had intervened to support.

Unanswered questions

AI is being used increasingly to develop new products and processes, including massive investment in life sciences across every stage of drug/target discovery and commercialisation. This trend may accelerate with the spread of "generative AI", which is typically able to generate useful "zero shot" output without specific training on the problem being addressed. Therefore, the patentability of AI-assisted and AI-generated inventions is becoming increasingly important.

The Supreme Court's judgment was based on the untested assumption that DABUS autonomously generated the new product/process (and Dr Thaler did not designate any human inventor). Because of this, it does not explore the scope of "autonomous" generation or the boundary between inventions merely assisted by AI, or made jointly with AI, and those made by and attributed solely to an AI. Nor does it explore the legal principles the court should apply in such circumstances. For example, should the court apply existing caselaw on joint inventors to establish whether the contribution of a human to an AI-assisted invention amounts to inventorship? Can a human be the inventor of a new product/process merely by recognising the importance and utility of a new product/process in the output of a machine (as suggested in research commissioned by the European Patent Office (EPO))? Or by training the AI and setting the AI a task to devise a new product/process for a specified purpose? Can a human be designated as an inventor merely by owning the AI that outputs a new product/process?

Has the UK departed from the EPO on these issues? Lord Kitchin noted that sections 7 and 13 of the Patents Act 1977 need not be interpreted in accordance with the European Patent Convention (EPC). He found that "Section 7 does not confer on any person a right to obtain a patent for any new product or process created or generated autonomously by a machine, such as DABUS, let alone a person who claims that right purely on the basis of ownership of the machine". By contrast, the EPO's Legal Board of Appeal decision (J 0008/20) on the equivalent European patent applications under the EPC said "[t]he Board is not aware of any case law which would prevent the user or the owner of a device involved in an inventive activity to designate himself as inventor under European patent law".

What happens if a human is innocently or fraudulently named as the inventor where an AI autonomously generated the new product/process? In the Court of Appeal, Birss LJ warned against a "new kind of argument about fraud on the Patent Office" and suggested that introducing such arguments in the UK "would not be a welcome step". Lord Kitchin held that his findings did not "introduce a new ground for refusing patent applications", but what does that mean? Since the Supreme Court was interpreting the Act, it could not "introduce" a new ground for refusing patent applications, but has it brought an existing ground to light? Lord Kitchin held that references to "the invention" in section 7 "are necessarily references to an invention devised by a person". The Supreme Court did not consider the reference to "invention" in section 72(1)(a), which permits the revocation of a patent on the ground that "the invention is not a patentable invention" – does that include the ground that the invention was not an invention devised by a person? Even if a patent cannot be revoked in these circumstances, might it be unenforceable on the basis that an applicant falsely naming a human inventor has abused a dominant position (by analogy with, e.g., AstraZeneca v European Commission C-457/10).

More generally, questions going to the availability of intellectual property protection for, and the extent of permitted use of third parties' intellectual property by, artificial intelligence is testing the suitability of current intellectual property laws for the age of generative AI. The UK Government has already consulted on changing the law on the patentability of AI-generated inventions and declined to proceed.  

AI is beginning to make more appearances in intellectual property disputes. A month before the UK Supreme Court's judgment, in a different case (Emotional Perception AI v Comptroller [2023] EWHC 2948 (Ch)) the High Court of England and Wales concluded that a patent application to an invention relating to the AI training and provision of recommended media files to a user was not excluded from patentability for being no more than a "computer program as such". Please read our previous insight, Get ready for patents for AI: UK court says artificial neural networks are patentable, for commentary on that case. In another case in the High Court, copyright infringement, trademark infringement and passing off claims brought by Getty Images are proceeding to trial in respect of the training and operation of Stability AI's deep learning AI named 'Stable Diffusion' – please read our previous insight, Copyright law to be tested in AI High Court case for our commentary on that case. Meanwhile, an increasing numbers of cases have been started in the US, now including a claim started on 27 December 2023 by the New York Times against OpenAI for copyright infringement.

Please contact our AI Law team with any questions on the many IP issues relating to AI.