Posted by Laura Ercoli on Wednesday January 17th, 2024

AI and patents: UK Supreme Court confirms inventor must be a natural person in ruling on DABUS appeal

The UK Supreme Court has issued its ruling in the DABUS patent application appeal, confirming that under UK patent law the inventor named in a patent application must be a natural person, and thus cannot be an artificial intelligence system.

On 20 December 2023 the Supreme Court of the United Kingdom issued its judgement in the appeal against the refusal of the Comptroller General of Patents, Designs and Trade Marks to allow the patent applications filed by Stephen Thaler, an American expert and entrepreneur in the artificial intelligence sector, in which an artificial intelligence (AI) system, was named as the inventor.intelligenza artificiale e brevetti

Mr. Thaler believes it should be possible to obtain patents made independently by AI systems, and has filed a number of patent applications worldwide in an effort to support the idea. In all such applications the inventor was named as an AI system called the DABUS (Device for Autonomous Bootstrapping of Unified Sentience), created and owned by Mr. Thaler.

As we previously reported (see Related content below), Mr. Thaler’s patent applications have so far been successful only in South Africa. Mr. Thaler, assisted by an international team of attorneys, has appealed against several decisions rejecting his applications in other jurisdictions. So far none of such appeals have been successful, including the one before the European Patent Office (more here).

The decision of the UK Supreme Court

The judgement of the Supreme Court of the United Kingdom points out preliminarily that the appeal did not concern the question whether or not technical advances generated by machines acting autonomously and powered by AI should be patentable, but concerned solely the interpretation and application of the relevant provisions of the United Kingdom’s Patents Act 1977.

Mr. Thaler had made it clear in the patent applications filed in the United Kingdom that he was not the inventor, and claimed that he had acquired the right to the grant of the patents by his ownership of the DABUS machine.

The Comptroller-General of Patents, Designs and Trade Marks (hereinafter “the Comptroller”), upon finding that the inventor named in the application was not a natural person, had requested Mr. Thaler to name a natural person as the inventor. When Mr. Thaler failed to do so within the prescribed deadline, the Comptroller proceeded to treat Mr. Thaler’s applications as withdrawn.

The Supreme Court unanimously dismissed the appeal, holding that under the United Kingdom’s Patents Act 1997, the inventor named in a patent application must be a natural person; on this basis, the court first of all held that the Comptroller had been right to deem the applications withdrawn, and secondly dismissed Mr. Thaler’s claim that he had the right to apply for a patent for any technical advance in an invention made autonomously by DABUS.

According to a statement made by Mr. Thaler’s counsel to the IPWatchdog  news outlet, “future legal disputes will likely focus on how much and what kinds of contributions from a natural person are required to devise and invention with the involvement of artificial intelligence, and this is likely to become increasingly challenging to determine, as artificial intelligence is increasingly adopted across industries and become increasingly sophisticated”.

Further information

Questions on patenting inventions involving AI in Europe? Contact us, we are happy to help.


Related content

Flash news – EPO Board of Appeal dismisses DABUS appeal: inventor in a European patent application must be a human

Flash news – Artificial intelligence and patents: DABUS appeals rejected in the US and UK

Flash news – The DABUS case: can an artificial intelligence system be designated as the inventor in a patent?

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