UK Supreme Court: AI Cannot Be an Inventor

Although not entirely unexpected, the Dec. 20 decision by the United Kingdom Supreme Court on the so-called Device for the Autonomous Bootstrapping of Unified Sentience (DABUS) patent applications is truly significant in the field of artificial intelligence and whether AI-generated inventions can be patented in the U.K. It is important to note that the judgment does not address the question of whether AI-generated inventions meet the requirements for patentability, but considers instead questions around inventorship and ownership. 

Instead, Dr. Stephen Thaler, president and CEO of Imagination Engines, the patent applicant has contended throughout that the DABUS AI system (which he had created) conceived the inventions and that he was entitled to own the inventions because he owned DABUS. As the Judgment records:

“[I]n this jurisdiction, it is not and has never been Dr. Thaler’s case that he was the inventor and used DABUS as a highly sophisticated tool. Had he done so, the outcome of these proceedings might well have been different.”

The United Kingdom Patents Act 1977 sets out who has the right to apply for and obtain a patent. The starting or default position (section 7(2)(a)) is that a patent may be granted to the inventor, but this default position can be change (section 7(2)(b)) where the inventor has contracted with some (typically an employer), or successors (section 7(2)(c)). The section finishes with the words “and to no other person.” One needs therefore to consider who is the inventor (i.e. the devisor of the invention) and everything then flows from that.

After considering the references in Patents Act to “persons” and “inventor” the Court concluded that there is:

“[O]nly one interpretation: 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: it is a machine and on the factual assumption underpinning these proceedings, created or generated the technical advances disclosed in the applications on its own.”

As there is no “inventor” it necessarily follows that there was no person to whom a patent could be granted.

The Supreme Court also held that even if that hurdle had been overcome, merely being the owner of DABUS is not sufficient to transfer ownership of the rights in the invention Thaler.   

Accordingly, his patent applications failed as Thaler had failed to name the inventor and because he had failed to explain how he had the right to file the patent applications.

The case always has been seen as a test case taking on the sections in the U.K. patent legislation around inventorship. The judgment does not address the question about what would have happened had Thaler kept quiet about the involvement of the DABUS AI system in making the inventions, and had just filed patent applications naming himself as inventor. 

The U.K. Patent Office very unlikely would have looked behind such statements and would have allowed the patent applications to proceed. Had they subsequently been granted it then would have been up to third parties to challenge those patents on the basis of lack of human inventor. In the years to come we may well see such a case. 

It is now, however, settled law in the U.K. that an AI system cannot be an inventor – at all times it is necessary for the named inventor to be a natural person.