IP lawyers received a much-anticipated early Christmas present on 20 December, as the UK Supreme Court finally issued its decision in the DABUS AI case[1] - finding unanimously that an AI machine could not be named as the inventor in a patent application.
The case had been billed as one of the most important IP cases of the year, and the judgment of the UKSC had been expected in the summer. However, given the important legal principles being considered as part of the case (and the UK Government no doubt keeping a close eye on things as the UK looks to position itself as taking a pro-innovation approach to AI), it is hardly surprising that we have been made to wait a little longer for the decision.
Facts
This case concerns two UK patent applications (the "Applications") for inventions that the appellant, Dr Thaler, claims were created by an AI machine known as DABUS (which stands for a "device for the autonomous bootstrapping of unified sentience"), in the absence of a traditional human inventor. Dr Thaler is the sole owner, creator and user of DABUS.
The Applications relate to: (1) an interlocking food container based on fractal geometry that is easy for robots to grip and stack, and which can be rapidly reheated; and (2) a flashing beacon for attracting attention in an emergency. The Applications state DABUS itself as the inventor.
The key questions at the heart of the case:
- Does section 13(2)(a) of the Patents Act 1977 (the "1977 Act") require a person to be named as the inventor in all cases, including where the applicant believes the invention was created by an AI machine in the absence of a traditional human inventor?
- Does the 1977 Act provide for the grant of a patent without a named human inventor?
- In the case of an invention made by an AI machine, is the owner, creator and user of that AI machine entitled to the grant of a patent for that invention?
Earlier judgments (UK & beyond)
In the UK, the UKIPO handed down its decision in December 2019 refusing to accept the designations of DABUS as the inventor in the Applications pursuant to section 13(2) of the 1977 Act on the ground that DABUS is not a "person", as envisaged by sections 7 and 13 of the 1977 Act. Dr Thaler’s appeal of the UKIPO decision was dismissed in the High Court and the Court of Appeal, with Arnold LJ stating in the latter decision that the Court "must apply the law as it presently stands" and that the case was "not an occasion for debating what the law ought to be".
The case and issues being debated are not exclusive to the UK, however. Dr Thaler lodged similar patent applications in numerous other jurisdictions, including the EU, Germany, US, South Korea, Australia, New Zealand, Israel and South Africa.
The same outcome has been reached in all of the other jurisdictions in which Dr Thaler has submitted applications, except in South Africa – where the South African IP Office (the Companies and Intellectual Property Commission) granted Thaler’s application. However, it should be noted that South Africa operates a much less onerous patent application and grant process - a depository system - meaning that applications receive far less scrutiny than in the UK for example. It remains to be seen, therefore, whether the South African decision will be appealed / the patents revoked.
In one last attempt (in the UK at least), Dr Thaler appealed to the UK Supreme Court - in the hope that, unlike the Court of Appeal, it would take the chance to move the law in this area forward.
UKSC Decision
Alas, the UKSC did not give Dr Thaler and DABUS the Christmas joy they were looking for. In a unanimous decision, they held that:
- an inventor under the 1977 Act must be a natural person;
- that it is flawed and legally impossible to name DABUS as the inventor, as only a natural person can devise an invention – with that being the only reasonable interpretation of the relevant sections of the 1977 Act;
- DABUS is not a person at all, let alone a natural person; and
- when passing the 1977 Act, Parliament did not envisage a machine acting on its own as an inventor.
On question three, the UKSC also rejected Dr Thaler's claim that, given that he is the owner of DABUS, he has the right to be granted the patents himself through the doctrine of accession. Section 7(2) of the 1977 Act is clear that patents can be granted primarily to the inventor (which Dr Thaler has admitted he is not), but also to a person who at the time of the making of the invention is entitled to the whole of the property in it. The UKSC found that:
- the doctrine of accession could not apply to Dr Thaler – firstly, because DABUS is not an inventor; and
- secondly because his claims mischaracterise an invention as being or amounting to tangible property such that title to it can pass, as a matter of law, to the owner of the machine which, on Thaler's assumption, generated it.
Given that Dr Thaler failed, therefore, to identify the (natural) person whom he, as the applicant, believes to be the inventor, the Applications shall be taken to be withdrawn.
Comment
On the one hand, the decision should not come as any real surprise. It follows established principles that UK courts will not (without good reason) stray beyond the ordinary meaning of words, whether in legislation or in contract, and is also in keeping with the decisions in (most) other jurisdictions.
For some, however, the decision will no doubt be disappointing and will likely exacerbate the calls for the UK’s patent laws to be updated to reflect the technological advancements since the Patents Act was introduced in the 1970s.
Had the decision gone the other way, allowing AI inventorship, it would have had a significant impact on the UK statutory definition of ‘’person’’ under the Patents Act 1977 and, on a much wider level, ultimately the extent to which liability could be attached to AI systems in the future. Such a decision would, undoubtedly, have raised a number of much bigger legal questions, e.g., (a) if an AI constitutes a person for patent purposes, can you sue the AI?; (b) can the AI then own a physical property or enter a contract the same way as a (human) person or company can?; and (c) can you sue an AI system, and if so, how would holding it liable work in practice?
Though the UKSC has, in this case, decided that now is not the time to open that particular can of worms – it is surely only a matter of time before these issues will need to be ruled on and/or relevant legislation updated (or new legislation passed) to cater for the accelerating technical revolution.
The decision concludes what has been an important and busy year in the AI legal landscape - as the EU edges closer to passing its new AI Act, and on the back of last month’s decision in Emotional Perception[2], in which the UK High Court paved the way for AI technology to be patented, getting round section 1(2)(c) of the 1977 Act which excludes computer programs from patentability (the result of which has seen the UKIPO suspend and review its guidance on AI patents).
We look forward to seeing what 2024 brings in this field, but in the meantime, please get in touch with one of our specialists if you would like to discuss any of the themes of this case in more detail.
[1] Thaler (Appellant) v Comptroller-General of Patents, Designs and Trade Marks (Respondent)
[2] Emotional Perception AI Ltd v Comptroller-General of Patents, Deigns and Trade Marks [2023] EWHC 2946 (Ch)
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