Supreme Court Rules That Patent Applications Must Identify Human Inventors

• Published date: 10 January 2024
• Subject Matter: Intellectual Property, Technology, Patent, New Technology
• Law Firm: Gowling WLG
• Author: Mr Matt Hervey and Ailsa Carter

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 A patent application not identifying a human person as the inventor must be taken to have been withdrawn.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...