Boutique IP firm Potter Clarkson has been appointed by litigation specialists Brown Neri Smith & Khan to represent computer scientist Steven Thaler in his latest bid to obtain clarification around AI-generated inventions.

Thaler is appealing to the UK High Court against a UK Intellectual Property Office (IPO) decision that rejected patent applications for two inventions produced by his AI system DABUS in which he was named as inventor.

In a case which could have major commercial implications for patents created with AI assistance, the appeal follows the UK Supreme Court’s December 2023 ruling which confirmed that under current UK law an AI system cannot be named as an inventor.

Scheduled for July 2025, the appeal will address patents related to those litigated at the Supreme Court. The challenge questions the UK IPO’s refusal to accept Thaler being named as inventor following the Supreme Court’s clarification.

Mark Nichols, head of AI at Potter Clarkson, said: “The Supreme Court case made clear that an AI cannot be named an inventor, but it did so from a procedural perspective – it found, essentially, that naming an AI as ‘inventor’ on the form is procedurally incorrect. It did not find that an AI cannot, per se, be an inventor.”

He added that Thaler “is now trying to say, ‘OK, if I have something invented by an AI, but cannot name that AI as inventor, what happens if I name myself as inventor on the form, as I am the person who created the AI?’”.

He said: “If the answer to that is also ‘no’, does that mean that AI inventions cannot be patented at all? 

“If that is the case, that should surely be something considered by the legislature, from a policy perspective – it risks dissuading AI invention and setting back economic and technological development.

“It should not, surely, be a decision made purely because it is procedurally incorrect or unclear as to who should be named on a form when filing a patent application.”

Artificial Inventor Project

Thaler’s litigation is part of the wider Artificial Inventor Project, led by Ryan Abbott, professor of law and health sciences at the University of Surrey, partner at Brown Neri Smith & Khan and counsel of record in Thaler’s US and UK cases. The project aims to address the legal handling of AI-generated inventions across jurisdictions.

Abbott said that the new appeal led by Potter Clarkson would add to the Artificial Inventor Project by looking at the more procedural points of AI patent applications. 

Just last week in the US, Thaler petitioned for a rehearing of the March ruling from the US Appeals Court for the District of Columbia (DC Circuit) in Thaler v Pulmater that confirmed only human beings can be authors of copyrightable works.

Represented by a team led by Abbott from Brown Neri Smith & Khan, Thaler filed the petition on 2 May seeking an en bank review, arguing that a rehearing was “necessary to correct errors that will have far-reaching and harmful consequences”, including frustrating the Copyright Act’s purpose by creating uncertainty and chilling creativity.

Since 2018, Thaler has been attempting to convince the US Copyright Office to accept a computer system that he had created, a “creativity machine”, as sole author of an image depicting train tracks running through a flowered tunnel.

In March, the DC Circuit came to the same conclusion as the Copyright Office and the district court, finding that the creativity machine “cannot be the recognised author of a copyrighted work because the Copyright Act of 1976 requires all eligible work to be authored in the first instance by a human being”. 

Thaler said the decision conflicted with US Supreme Court precedent on statutory interpretation, including specifically that the act contained no language requiring a human creator, yet the DC Circuit had found such a requirement. 

“This is contrary to decades of Supreme Court jurisprudence, which has consistently illustrated that the act should be read expansively to allow copyright protection to evolve along with technological innovation,” Thaler said. 

Thaler argued the AI executed the “traditional elements of authorship” and that his contribution was to build an AI system generally capable of generating creative works, and then to have effectively “pushed a button” that resulted in the output of a particular creative work.

He added that given the Copyright Office would not register a work in which the traditional elements of authorship were executed by an AI system, this case “presents the ideal facts to determine whether the Copyright Office’s test is permitted under the act”.