Can an AI system be an inventor for a patent in the UK – is it no, or just not yet?

DABUS – UK Court of Appeal Decision

On 21 September 2021, the UK Court of Appeal dismissed Dr Stephen Thaler’s appeal against the UK Intellectual Property Office’s decision to refuse two patent applications, in which Dr Thaler named his AI system (DABUS) as the sole inventor.

The outcome of the appeal will not come as a surprise to many. All three judges were aligned in their opinion that only a person, not a machine, can be an inventor for the purposes of the UK Patents Act 1977. However, there was a divergence of views amongst them as to whether this was fatal to Dr Thaler’s patent applications.

The main debate centred around section 13(2) of the UK Patents Act. This requires a patent applicant to name the person(s) whom they believe to be the inventor(s) – and, in the case where the patent applicant and the inventor(s) are not the same, the applicant must also indicate how they have derived their right to be granted the patent.

The judges all agreed that this section is not intended to stop a UK patent from being granted, or to make it vulnerable to revocation, if there has been a bona fide error in identifying the correct inventors or the basis on which the applicant has acquired the rights to the invention. The UK IPO is not required to examine an applicant’s chain of title, but of course this does not preclude a subsequent challenge by the rightful owner, if it transpires that the original applicant did not in fact have the right to apply for the patent.

The dissenting judge (Lord Justice Birss) thought that, in order to satisfy the requirements of section 13(2), it was enough for an applicant to have an honest, subjective belief that they have correctly identified the inventor and have said how they claim to have derived their title to the invention. On the basis that Dr Thaler identified honestly who (or in this case, what) devised the invention, and that it was not UK IPO’s job to verify Dr Thaler’s title, Birss LJ would have allowed the appeal.

However, the majority of the judges (Lord Justices Arnold and Laing) decided that section 13(2) requires a patent applicant to name a person (rather than a machine) as the inventor, and to cite a known legal basis on which the applicant has derived its rights to apply for the patent. Dr Thaler said that, because he was the owner of DABUS, he should also own its outputs – arguing that the old common law doctrine of “accession” should apply (which provides the owner of a physical object, such as tree, will also own what it produces, e.g. its fruits). This argument was rejected, with Arnold LJ confirming that this doctrine only applies to the ownership of an item’s physical outputs, and not intangible outputs such as intellectual property.

What’s next for DABUS?

The dissenting opinion may give Dr Thaler a glimmer of hope on which he might decide to base an appeal to the Supreme Court … but how likely is it that the Supreme Court would arrive at a different result without legislative change? In the Court of Appeal judgment, Arnold LJ was minded to point out that this case was all about applying the current law, not about what the law ought to be, and Laing LJ specifically commented that if patents are to be granted in respect of inventions made by machines, then the law will have to change. Also, the UK IPO is actively planning to carry out a consultation later this year on a range of policy options (including legislative change) in respect of AI-generated inventions. This initiative comes off the back of the UK IPO’s “Call for Views on Artificial Intelligence and Intellectual Property”, the results of which were published in April this year. For our earlier commentary on this, please see https://www.bristows.com/news/uk-governments-call-for-views-on-artificial-intelligence-and-intellectual-property/.

Meanwhile, Dr Thaler is having similar battles in respect of his patent applications overseas for the equivalent inventions. Recent decisions in Australia and South Africa have gone in Dr Thaler’s favour, but his applications have been rejected by the European Patent Office (EPO) and the United States Patent and Trademark Office (USPTO). The EPO’s decision is being appealed and is due to be heard in December 2021. The USPTO also refused Dr Thaler’s applications, and although on appeal the Virginia Eastern District Court ruled in the USPTO’s favour earlier this month, we understand Dr Thaler is planning to appeal to the Federal Circuit. However, the patent laws for all these jurisdictions differ to some degree on this topic and so we can expect mixed outcomes ultimately.

What if AI could qualify as an inventor for UK patents in the future?

If in the future it is decided that a machine can qualify as an inventor for the purposes of the UK Patents Act, then a number of other things will also need to be considered:

1 – Test for inventorship: the current test for UK patents is that the “actual deviser” of the invention is the inventor. There would be no obvious need to change this test for machines. The existing test is flexible enough so that, depending upon any given facts as to how the invention came about, the inventor could be AI system itself, its user or even the person who constructs the datasets on which the AI is trained. In some cases there could be a team of inventors, made up of a combination of any of these.

2 – Ownership of AI-generated inventions: assuming that, for any given invention, the AI system itself came up with the inventive concept (and was not used merely as a tool in the traditional sense), then who should be entitled to apply for the corresponding patent? In Thaler’s case, Thaler was the sole owner, creator and operator of DABUS, and seemingly no one else was involved, so in practice there would be very little (if any) debate about who it should be. However, in other scenarios, the creator, owner and operator of the AI system might all be different. The UK Government would need to make some clear rules about who should own the outputs of a machine in the absence of any agreement to the contrary. Several respondents in the UK IPO’s “Call for Views” thought that the AI’s creator, owner or operator were all obvious possibilities, but that the main choice would be the AI’s owner, as that would be most consistent with general principles of property ownership. If the UK Government were to adopt that option, the result might be similar (in a roundabout way) to extending the doctrine of accession to IP outputs after all.

In the meantime, there is no suggestion that there would be any change to the current UK legislation which gives parties the freedom to agree a different ownership position in a contract. Even though there is still uncertainty as to whether or not an AI system’s outputs can be patented (or protected by any other form of IP right), and the position will vary from country to country in any case, it nevertheless will be important as ever for the parties to any contract to address specifically what their respective rights will be in relation to any IP/outputs generated from their relationship, including any outputs that are produced by an AI system and any developments to the AI system itself.