In the landmark decision of Thaler v Comptroller-General of Patents, Designs and Trade Marks [2023] UKSC 49, the UK Supreme Court has set a significant precedent in the realm of AI and patent law.
It addresses the critical issue of whether an artificial intelligence (AI) system can be recognised as an ‘inventor’ for the purposes of patent applications. This decision may have significant implications, especially for industries like life sciences and pharmaceuticals.
The core of the appeal revolved around two patent applications filed by Dr Stephen Thaler, where the alleged ‘inventor’ of the products and processes was an AI system named Device for the Autonomous Bootstrapping of Unified Sentience (DABUS). Dr Thaler contended that as the owner of DABUS, he was entitled to the patents. However, the UK Supreme Court unanimously held that an AI system cannot be recognised as an inventor under the current legislative framework of the Patents Act 1977 (the Act). The UK Supreme Court emphasised that an ‘inventor’ must be a natural person, and since DABUS, a non-human entity, created the inventions autonomously, it did not fit within the legal definition of an inventor.
Dr Thaler’s argument to the UK Supreme Court can be summarised as follows:
The UK Supreme Court’s examination of the role and status of DABUS in the Thaler v Comptroller-General of Patents, Designs and Trade Marks case is particularly insightful. DABUS, an artificial intelligence system, was at the heart of the legal debate.
The crux of the UK Supreme Court’s decision hinged on the interpretation of the term ‘inventor’ within the Act. The Act defines an inventor as ‘the actual deviser of the invention’. The UK Supreme Court emphasised that this language unambiguously refers to a natural person, thus excluding non-human entities like AI systems. This interpretation adheres to the traditional understanding of inventorship, which inherently links human intellect and creativity to the concept of invention.
The central legal issue was whether DABUS could be recognised as an ‘inventor’ under the Act. Dr. Thaler’s argument hinged on the idea that as the owner of DABUS, he should be entitled to the patents of the inventions created by it. The UK Supreme Court, however, held that under the current legal framework, an ‘inventor’ must be a natural person. Since DABUS is a machine and not a natural person, it cannot be considered an inventor within the meaning of the Act, with the UK Supreme Court stating at paragraph 56:
The UK Supreme Court’s judgment underscores a human-centric approach inherent in the current patent system. It highlights that the patent system is designed around human inventors, recognising their contribution and granting them rights which can be legally transferred and exercised. This approach reflects the traditional view that inventions are the fruit of human ingenuity.
The question must be considered that if Dr Thaler had positioned himself as the human inventor of the patents in question, utilising DABUS solely as a tool in the invention process, the legal trajectory and potential outcome of his case could have been markedly different. The UK Supreme Court’s interpretation is that only a natural person can be an inventor, and if Dr Thaler named himself as the human creator who employed DABUS as an instrumental aid, similar to a scientist using a computer for research, Dr Thaler’s approach could have aligned with the established legal norms of inventorship.
This compliance may have satisfied Section 13 of the Act, which necessitates the identification of a human as the inventor. In this alternate scenario, DABUS would be relegated to the role of a sophisticated facilitator in the creative process, rather than being perceived as an autonomous entity capable of invention, and the central legal argument would have been around whether Dr Thaler, by using such a tool, was the “actual deviser of the invention”, similar to issues we have seen in terms of copyright ownership of AI generated works in the USA.
This decision has significant implications, particularly for industries that heavily rely on AI for innovation, such as life sciences and pharmaceuticals. The decision implies that any invention autonomously generated by AI cannot be patented unless attributed to a human inventor. This could potentially slow down the pace of AI-driven innovation in these sectors, as organisations might be reluctant to invest heavily in AI research if the fruits of such labour cannot be legally protected. This decision necessitates a re-evaluation of the role of AI in the inventive process for such industries:
This shift could increase costs and complexity in research and development, as companies would need to balance the integration of AI with the necessity of human involvement to secure patent protection.
On a broader scale, the decision reflects the current limitations of intellectual property law in keeping pace with technological advancements. It underlines the need for legislative reform to address the evolving landscape of AI-driven innovation. Until such legal reforms are introduced, AI systems like DABUS cannot be recognised as inventors, which could hinder the full exploitation of AI’s potential in critical sectors like life sciences and pharmaceuticals.
The UK Supreme Court’s decision in Thaler v Comptroller-General of Patents, Designs and Trade Marks establishes a clear legal precedent that AI systems cannot be recognised as inventors under current UK patent law. This decision has far-reaching implications, particularly in AI-intensive industries, underscoring the need for legislative evolution to accommodate the growing role of AI in innovation.
