The complexities surrounding intellectual property and artificial intelligence (“AI”) continue to unfold. While our previous article explored the murky waters of copyright protection for AI-generated works, this week we delve into another pivotal question: can AI be designated as the “inventor” under UK patent law? This issue has recently been addressed by the UK Supreme Court, offering some much-needed clarity on a subject rife with legal implications.
The Case Study: Dr. Thaler and “DABUS”
Filing of patent applications requires the inventor(s) to be named. Now imagine a scenario where an AI autonomously creates an invention, without any human interference or control. Could this AI be named as the “inventor” under UK patent law?
This is more than an academic discussion but an actual case in the United Kingdom, where Dr. Thaler filed two patent applications under the Patents Act 1977 for (i) a new kind of food or beverage container, and (ii) a new kind of emergency light beacon. Notably, neither application named a human inventor, nor did Dr. Thaler file a separate document designating one. In fact, Dr. Thaler emphasized and clarified that these inventions were created by his AI machine, called “DABUS”, in which Dr. Thaler claimed that “DABUS” is the ‘inventor’, and since he is the owner of DABUS, he also claimed that he should be granted the right of patents for those applications.
This case doesn’t focus on whether AI-generated technical advances are patentable or whether the term “inventor” needs broadening. Instead, it explores two key questions: (i) can AI ever be named as the “inventor,” and (ii) can the owner of an AI machine obtain patents for inventions autonomously generated by that AI machine? It is crucial to note that this is not a case where Dr. Thaler is claiming that he was the inventor and used DABUS as a highly sophisticated tool, but a case where the claim is made on the basis that all inventions were made by his AI machine, DABUS, and since he owned DABUS, he should be granted the patent rights for those inventions.
Can AI be Designated as an “Inventor” under UK Patent Law?
Turning to the first question on whether AI could be named as the inventor under UK patent law.
The UK Supreme Court examined Sections 7 and 13 of the Patents Act 1977 and unanimously affirmed that the context of the Patents Act 1977 permits only one interpretation: an inventor must be a natural person. It allows no other interpretation to permit DABUS to be named as the inventor because “an inventor within the meaning of the 1977 Act must be a natural person, and DABUS is not a person at all, let alone a natural person… Accordingly, it is not and never was an inventor for the purposes of Sections 7 and 13 of the 1977 Act.”
From the above, it is clear that the current UK patent law leaves no room for an AI to ever be named as the “inventor” given the strict requirement that an “inventor” must be a natural person.
Ownership of AI Machines and Patent Rights
Now we will turn to explore the second question: whether the owner of the AI machine is entitled to apply and obtain the patent in respect of any invention or any technical advance autonomously generated by the AI machine.
This is closely linked to the first question. The UK Supreme Court reiterated that the patent law is clear that the inventor must be a person. In this case, it is without doubt that DABUS was not and is not a person, and hence DABUS could not be named as the “inventor” under the patent law. It went on to clearly explain that “Section 7 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.” Therefore, given that DABUS could not be the “inventor”, there is technically no “inventor” through whom Dr. Thaler could claim the right to obtain a patent for any technical advance.
From the above, two strong conclusions are made: (i) AI could not be named as the “inventor”, as it must be a natural person, and (ii) the owner of the AI machine could not apply for and obtain patents for the technical developments purely on the basis that he has ownership of the AI machine when the inventions were wholly created by the AI machine autonomously.
Differentiating Human Oversight from Autonomous AI Inventions
It is crucial to highlight an important remark made by the Supreme Court that in cases where the inventor uses DABUS as a highly sophisticated tool, the outcome of these proceedings might well have been different.
This indicates that under the current law, inventions autonomously created by AI without any human inventor are not patentable in the UK. However, in cases where there is human oversight of AI in directing its work, the human inventor could then be named and be granted patent protection for the invention.
Implications and Recommendations
In conclusion, the UK Supreme Court’s ruling has provided unequivocal clarity on the matter: AI cannot be designated as an inventor under current UK patent law. Furthermore, the ownership of an AI machine does not confer the right to obtain patents for inventions autonomously generated by the AI. These decisions underscore the necessity for organizations investing in AI to collaborate closely with legal experts to navigate the evolving landscape of intellectual property rights.
As technology continues to advance and AI plays an increasingly significant role in innovation, it is imperative for policymakers and legal frameworks to adapt accordingly. The current limitations highlight the urgency for legislative updates that address the unique challenges posed by AI-generated inventions. Until such reforms are enacted, organizations must prioritize comprehensive strategies for protecting their AI-driven innovations, ensuring that the contributions of both human inventors and AI systems are recognized and safeguarded within the bounds of existing legal frameworks.
If you are looking to develop AI tools and have concerns about intellectual property protection or safeguarding the output, please reach out to our dedicated team of professionals. With a deep understanding of both AI technology and intellectual property law, our lawyers are well-equipped to assist you throughout the entire process, ensuring that your AI-generated work receives the protection it deserves in the rapidly evolving legal landscape.
This article is intended to be informative and not intended to be nor should be relied upon as a substitute for legal or any other professional advice.
About the authors
Ong Johnson
Partner
Head of Technology Practice Group
Transactions and Dispute Resolution, Technology,
Media & Telecommunications, Intellectual Property,
Fintech, Privacy and Cybersecurity
johnson.ong@hhq.com.my
Lo Khai Yi
Partner
Co-Head of Technology Practice Group
Technology, Media & Telecommunications, Intellectual
Property, Corporate/M&A, Projects and Infrastructure,
Privacy and Cybersecurity
Halim Hong & Quek
ky.lo@hhq.com.my
