AI As An Inventor? . . . Not So Fast

• Published date: 24 January 2024
• Subject Matter: Intellectual Property, Technology, Patent, New Technology
• Law Firm: Manatt, Phelps & Phillips LLP
• Author: Mr Bruce Zisser

In December, the United Kingdom (the "U.K.") became the fourth jurisdiction to reach a final determination that a generative AI platform could not be named as an inventor on a patent. Like courts in the United States, Australia and Taiwan before it, the U.K. Supreme Court relied on statutory language to hold that "an inventor within the meaning of the 1977 [U.K. Patent] Act must be a natural person and [the AI] is not a person at all, let alone a natural person." Thaler v. Comptroller-General of Patents, Designs and Trade Marks, [2023] UKSC 49, 14.

In each instance the court was asked to consider a patent presented by Dr. Stephen Thaler as part of his Artificial Inventor Project (the "AIP") where Dr. Thaler named his AI platform, DABUS, as the sole inventor. Dr. Thaler and AIP have initiated test cases in eighteen jurisdictions around the world seeking intellectual property rights, i.e., patents and copyrights,¹ for AI-generated output without a traditional human inventor or creator. According to the AIP, the goal is "to promote dialogue about the social, economic and legal impact of frontier technologies such as AI and to generate stakeholder guidance on the protectability of AI-generated output."

Of the eighteen jurisdictions in which Dr. Thaler has filed patent applications, four have been rejected (U.S., U.K., Australia and Taiwan), five have been rejected pending further judicial review, seven are still in the prosecution stage, one has been allowed, and one has been granted. In each jurisdiction, Thaler filed patent applications on two inventions: one teaching a food container with walls having a fractal profile, and the other an LED lamp device having pulse train "at a frequency and fractal dimension" for "attracting enhanced attention." In each case Dr. Thaler identified the sole inventor as the AI DABUS.

Figure 1 Fractal Container (Fig. 1) and Neural Flame (Fig. 12) both described in WO2020079499

Like the U.K. Supreme Court, the United States Court of Appeals for the Federal Circuit held that "[f]or the reasons explained above, the Patent Act, when considered in its entirety, confirms that 'inventors' must be human beings." Thaler v. Vidal, 43 F.4th 1207, 1212 (Fed. Cir. 2022), cert. denied, 143 S. Ct. 1783, 215 L. Ed. 2d 671 (2023). Similarly, in Australia, the Federal Court of Australia reversed the Primary judge and concluded that "having regard to the statutory language, structure and history of the Patents Act, and the policy objectives...