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News


SUPREME COURT FINDS AI IS NOT AND NEVER WAS AN INVENTOR FOR PATENT PURPOSES

By Bianca Castro20 December 2023

   
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The Supreme Court has upheld that an artificial intelligence program cannot be
named as the ‘inventor’ on a patent application. Today’s judgment in Thaler v
Comptroller-General of patents, designs and trade marks follows an attempt by
computer scientist Dr Stephen Thaler to establish that AI systems can make
inventions. 

The hearing officer for the comptroller-general of patents had disallowed two
applications, for a food container and a light beacon, because the machine that
made the inventions did not qualify as an inventor within the meaning of the
Patents Act 1977. Thaler unsuccessfully appealed to the High Court. The Court of
Appeal agreed, by a majority, with the hearing officer.

In today’s judgment, Lord Kitchin, with whom Lord Hodge, Lord Hamblen, Lord
Leggatt, and Lord Richards agreed, said the appeal was ‘not concerned with the
broader question whether technical advances generated by machines acting
autonomously and powered by AI should be patentable’ or whether the meaning of
the word 'inventor' ought to be expanded.

He added: ‘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 how to put them into
practice across the range of the monopoly sought.

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‘It may be thought that the rapid advances in AI technology in recent times
render these questions even more important than they were when these
applications were made.’

The judgment noted that Thaler does not claim to be ‘and indeed is not’ the
inventor of any inventions described or disclosed in the applications. It added
it ‘remains his belief and case that the inventions were made by DABUS, a
machine powered by AI; and that DABUS ought therefore to be named and recognised
as inventor’.

‘In all these circumstances the comptroller was right to decide that DABUS is
not and was not an inventor of any new product or process described in the
patent applications. It 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.’

The Supreme Court found Thaler’s argument that he was entitled to file
applications for and obtain patents for the inventions on the basis of his
ownership of DABUS to be without merit.

Dismissing the appeal, the judge said: ‘On the factual assumptions upon which
this appeal is proceeding, Dr Thaler has never had any right to secure the grant
to himself of patents under the 1977 act in respect of anything described in the
applications.’

Commenting on the judgment, IP specialist Rajvinder Jagdev, of litigation firm
Powell Gilbert, said: ‘The judgment does not preclude a person using an AI to
devise an invention – in such a scenario, it would be possible to apply for a
patent provided that person is identified as the inventor. The judgment alludes
that, had this been the scenario it had been asked to consider, the outcome may
have been different.



‘It is now for parliament to decide whether or not to permit AIs to be inventors
– whether it will or not remains to be seen.’

Nick White, partner at City firm Charles Russell Speechlys, said: ‘As AI systems
continue to advance in sophistication and capability, there is no denying their
ability to generate new and non-obvious products and processes with minimal, or
perhaps even without any, ongoing human input. Nevertheless, the legal framework
remains firmly rooted in historical context, and it does not recognise AI
systems as inventors under patent law, or as capable of owning IP. Change may be
on the horizon but it will most likely come from the policy makers, rather than
the judges.’

Giles Parsons, partner at City firm Browne Jacobson, agreed that the judgment
was not surprising. He added: ‘It’s fundamentally a decision about procedure;
when the Patents Act 1977 was drafted, the drafting was not intended to
encompass inventions made solely by AI. This decision will not, at the moment,
have a significant effect on the patent system. That’s because, for the time
being, AI is a tool not an agent. When AI does become an agent, rather than a
tool, there will be a host of legal, moral and metaphysical issues to consider;
whether an AI can be named as inventor of a patent may be one on a very long
list.’

 

Robert Jehan, Professor Ryan Abbott and Jacob Turner, instructed by Williams
Powell, appeared for Thaler; Stuart Baran, instructed by the Government Legal
Department appeared for the comptroller-general of patents, designs and trade
marks

 

This article is now closed for comment.



   
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5 READERS' COMMENTS

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 * Geoffrey BH Commented on: 20 December 2023 4:35pm
   
   Arguably AI is a device that is used by the initiator to perform a task that
   may have a greater or lesser degree of ingenuity.
   
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 * Anonymous#CommentAvatarLabel Commented on: 20 December 2023 3:18pm
   
   20 December 2023 2:47pm - excellent points.
   
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 * JEFFREY SHAW, AT NETHER EDGE LAW#CommentAvatarLabel Commented on: 20 December
   2023 3:01pm
   
   True; and could any person other than an individual have mens rea at all?
   
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 * Anonymous#CommentAvatarLabel Commented on: 20 December 2023 2:47pm
   
   If a machine invented by a machine invented by a machine invented by a
   machine invents a machine, who should be entitled to the patent?
   
   If the law is changed so that a machine is entitled to a patent, will the
   machine be able to open a bank account in order to bank the royalties
   received from that patent.
   
   Upon what would the machine spend the money?
   
   If the machine fails to pay tax on the income it receives, should it get
   prosecuted? If it were convicted, what would be the punishment? If it were to
   be fined, but had already spent all its money so it couldn't pay the fine,
   would it be committed to prison? Or would it be sufficient to decommission
   it?
   
   If a machine that has assets gets decommissioned, who would inherit its
   assets?
   
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 * JEFFREY SHAW, AT NETHER EDGE LAW#CommentAvatarLabel Commented on: 20 December
   2023 2:12pm
   
   Clearly, English law defines what a 'person' is. Here's s.61 0f LPA1925, for
   instance:
   
   61 Construction of expressions used in deeds and other instruments.
   In all deeds, contracts, wills, orders and other instruments executed, made
   or coming into operation after the commencement of this Act, unless the
   context otherwise requires...
   (b) “Person” includes a corporation...
   
   "AI" is not an individual or a Corporation- an artificial entity given the
   legal status of person by Act of Parliament (or, occasionally, Royal
   Charter); and nor is any computer program. Hence: not a person and not
   capable of having rights.
   
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