New UK Supreme Court ruling discusses patentability of AI inventions

New UK Supreme Court ruling discusses patentability of AI inventions

In a decision handed down in December (20), the UK Supreme Court ruled that artificial intelligence (AI) cannot legally be named as an inventor in order to secure patent rights. In the ruling, the UK’s highest court concluded, based on the 1977 Patents Act, that “an inventor must be a person” for a patent to be granted.

The unanimous decision came after an American computer scientist, Dr. Stephen Thaler, took his long-running dispute with the UK Intellectual Property Office (UKIPO) to the Supreme Court, challenging the rejection of his attempt to list an AI as the author of two inventions. According to him, his AI machine, called DABUS, autonomously created a food/drink container and a type of luminous beacon, and would therefore be entitled to apply for patents for the inventions.

In the judgment, the thesis applied that AI cannot legally be considered an inventor, as established by the Patents Act 1977 (section 7 and section 13). According to Judge David Kitchin, one of the judges in the case, the DABUS AI system is not a natural person, nor does it have legal personality, and therefore cannot be recognized as an inventor. As such, DABUS could not be the inventor and therefore could not transfer any patentable rights to its creator.

The Supreme Court further emphasized that the UKIPO was correct in deciding that DABUS did not conceive of any inventive step, being only an AI system. Therefore, the court ruled that the decision to consider Thaler’s applications as “extinct” under patent law was correct, as he had not identified a person as an inventor, not even himself.

Although it is a binding precedent only in the UK, the judgment brings the important discussion of generative AI into the field of patents and is a valuable contribution to the wider debate on the subject. It is worth noting that earlier this year, Stephen Thaler faced a similar situation in the United States, where the country’s Supreme Court chose not to review his appeal against the US Patent and Trademark Office’s (USPTO) decision to deny patents for inventions generated by his AI system.

The Supreme Court’s decision can be accessed via the link: https://www.supremecourt.uk/cases/docs/uksc-2021-0201-judgment.pdf

Note: For quick release and cost control, this English version is provided by automated translation without human review.