In Law360, Partner David Knight Discusses UK Supreme Court Ruling on AI Inventorship Patents

Partner David Knight authored an article for Law360’s Expert Analysis section examining the Dec. 20 decision by the U.K. Supreme Court regarding patent applications for inventions created by the device for the autonomous bootstrapping of unified sentience (DABUS).

In the Jan. 29 article, Knight noted that the decision is truly significant as applied to whether AI can be an inventor and owner of AI-generated inventions in the U.K. However, the judgement does not address whether AI-generated inventions meet the requirements for patentability, instead considering questions surrounding inventorship and ownership.

The decision stems from a case involving Stephen Thaler, president and chief executive officer of Imagination Engines, who owns and created DABUS, the system that created the inventions in question. Thaler did not list himself as the inventor, but instead listed DABUS as the inventor, and then asserted that he should be entitled to own the inventions because he owns DABUS.

U.K. law requires that the applicant for a patent file a statement of inventorship naming the inventor or inventors, Knight noted. Because Thaler did not do this, his patent applications failed, which was further compounded by his failure to explain how he had the right to file the patent applications.

“As there is no inventor, it necessarily follows that there was no starting point for determining to whom a patent could be granted,” Knight wrote. “The Supreme Court also held that, even if that hurdle had been overcome, merely being the owner of DABUS was not sufficient to transfer ownership of the rights in the invention to Thaler.”

Had Thaler kept quiet about the involvement of DABUS in the inventions and named himself as the inventor and applicant, however, the U.K. Intellectual Property Office likely would not have looked past that statement and allowed them to proceed. This would have left a challenge to those patents up to third parties.

It would not, however, provide a basis for seeking revocation of the patent as, under U.K. law, only a person otherwise entitled to the patent can seek its revocation on the ground that it was granted to someone not entitled to it, Knight explained.

“In the years to come, we may see cases addressing these issues,” Knight wrote. “In the meantime, the sensible approach for a Thaler-type patent applicant would be to position the AI as a tool that is used by an individual in making the invention, for that person's name to go on the statement of inventorship and to get away from the Thaler approach of naming the AI as the inventor.”

Read the full article here.