AI as Inventor: The Supreme Court's Stance in Thaler v Comptroller-General of Patents, Designs and Trade Marks

Introduction

The landmark case of Thaler v Comptroller-General of Patents, Designs and Trade Marks ([2023] UKSC 49) addresses the contentious issue of whether an artificial intelligence (AI) system can be recognized as an inventor under the Patents Act 1977. Dr. Stephen Thaler filed patent applications for inventions allegedly created autonomously by his AI machine, DABUS. The case escalated through various judicial levels, ultimately reaching the United Kingdom Supreme Court. This commentary delves into the intricacies of the judgment, examining the legal principles established, the court's reasoning, and the broader implications for patent law in the age of artificial intelligence.

Summary of the Judgment

The United Kingdom Supreme Court upheld the decision of the lower courts, affirming that an AI system, such as DABUS, cannot be recognized as an inventor under the Patents Act 1977. Dr. Thaler's applications for patents were dismissed on the grounds that the Act explicitly requires the inventor to be a natural person. Despite Dr. Thaler's argument that he should be entitled to patent the AI-generated inventions based on his ownership of DABUS, the court found no legal basis for such a claim. The majority opinion emphasized the statutory language and the legislative intent, concluding that only natural persons can hold the title of inventor. Consequently, the applications were deemed to be withdrawn as they failed to comply with sections 7 and 13 of the Patents Act.

Analysis

Precedents Cited

The judgment extensively referenced prior cases and authoritative interpretations to substantiate its stance. Notably, Rhone-Poulenc Rorer International Holdings Inc v Yeda Research and Development Co Ltd [2007] UKHL 43 was pivotal in defining the term "inventor" as a natural person. Additionally, the decision drew from the House of Lords' interpretation in the University of Southampton's Applications [2004] EWHC 2107 (Pat), wherein it was affirmed that the inventor must be a natural person who conceived the inventive concept. These precedents collectively reinforced the court's position that statutory provisions did not contemplate AI systems as inventors.

Legal Reasoning

The Supreme Court's reasoning was anchored in a meticulous examination of sections 7 and 13 of the Patents Act 1977. Section 7 delineates the criteria for patent eligibility, explicitly defining the inventor as "the actual deviser of the invention," implicitly requiring this role to be fulfilled by a natural person. Section 13 further mandates that any patent application must identify the inventor(s) and elucidate the applicant's entitlement to the patent. The court underscored that DABUS, being a machine without legal personhood, cannot satisfy the definition of an inventor. Moreover, Dr. Thaler's reliance on the doctrine of accession—the principle that ownership of a tool confers ownership of its outputs—was deemed inapplicable, as it pertains to tangible property and not abstract inventions generated by AI.

Impact

This judgment sets a definitive precedent in UK patent law, clarifying that only natural persons can be recognized as inventors. It reinforces the necessity for patent applicants to identify human inventors, thereby excluding AI systems from holding inventorship status. The decision has significant implications for the burgeoning field of AI-driven innovation, potentially limiting the ability of AI to autonomously contribute to patented inventions. Inventors and organizations leveraging AI technologies must ensure compliance with statutory requirements by maintaining human oversight and recognition in the patenting process. Additionally, this ruling may influence legislative debates and future reforms aimed at accommodating technological advancements within the patent framework.

Complex Concepts Simplified

Patentability: The criteria that an invention must meet to be eligible for patent protection, including novelty, non-obviousness, and industrial applicability.

Inventorship: The designation of individuals who contributed to the conception of the patented invention. Under the Patents Act 1977, inventors must be natural persons.

Doctrine of Accession: A legal principle where ownership of a tool or means extends to the products or outputs generated by its use. This doctrine was argued by Dr. Thaler to claim ownership of AI-generated inventions through ownership of DABUS.

Legal Personhood: The recognition of an entity as having legal rights and responsibilities. Machines or AI systems like DABUS do not possess legal personhood, and thus cannot hold the status of an inventor.

Conclusion

The Supreme Court's decision in Thaler v Comptroller-General of Patents, Designs and Trade Marks firmly establishes that the current legal framework under the Patents Act 1977 does not accommodate AI systems as inventors. By emphasizing the requirement for inventors to be natural persons, the court upholds the traditional principles of patent law, ensuring that the rights to inventions remain vested in human creators. This judgment underscores the necessity for legislative bodies to revisit and potentially amend patent laws to address the challenges posed by rapidly evolving AI technologies. Until such reforms are enacted, inventors and innovators will need to navigate the existing legal structures, ensuring that human inventorship is accurately attributed in patent applications.