UK Supreme Court grapples with whether AI can be a patent inventor as DABUS case is heard

Stephen Thaler’s controversial and topical bid to name his AI system DABUS as an inventor reaches the UK’s highest court

Can AI be a patent inventor? Jakub Jirsak

Physicist Stephen Thaler’s long-running attempts to secure inventorship for his AI system DABUS was heard at the UK Supreme Court on 2 March.

This is the latest round in the UK court battle;  in September 2021 the England and Wales Court of Appeal ruled in a 2:1 decision, that AI systems cannot own or transfer patent rights under UK law.

An appeal was then filed to the UK Supreme Court, the latest move in what has become a test case for patent law. However, it is playing out not just in the UK - Thaler has applied for patents listing his AI machine as the inventor in a number of jurisdictions, including the US, Europe and China. The UK ruling is at odds with the decisions reached in South Africa and Australia, which awarded patents that names DABUS as its inventor and the AI’s owner as the patent’s owner.

DABUS is a so-called ‘creativity engine’ that uses artificial neural networks to generate and assess new ideas. Thaler argues it’s the sole inventor of, among other things, a food container that improves grip and heat transfer.

Five judges heard the case on 2 March: Lord Hodge, Lord Kitchin, Lord Hamblen, Lord Leggatt and Lord Richards. Robert Jehan, a partner at London IP firm Williams Powell, represented the Thaler side. During the hearing, Jehan, while attempting to dispel the notion that AI systems were not able to invent, said: “DABUS has a mechanism to identify itself the novelty and salience of the present invention.”

Lord Kitchen questioned the meaning of ‘salience’ in this context. Jehan replied that the invention had neural networks that identified the novelty, utility and value of what came out of the machine. He explained that the salience was the value of the invention: identifying from the outputs what was the most worthwhile.

Jehan went on to discuss the second point - whether the UK 1977 Patents Act provides for the granting of a patent without a human inventor.

He argued there was no such requirement in the act that states that an inventor must be human to make the invention patentable. Even if the act assumes an inventor is human, “this does not constitute a substantive requirement to the grant of a patent nor a bar to the grant of a patent for an AI-generated invention”, he maintained.

Read the GLP Law Over Borders comparative guide to Artificial Intelligence

Three New Square’s Stuart Baran represented the UK intellectual property office (IPO) at the hearing. He said it was not reasonable to invite the court to wade into what is a “very multifactorial assessment on a very complicated policy area of interconnected problems. One that is controversial and topical”, without being provided with all the materials that sort of assessment would need.

He stressed that the comptroller-general, Adam Williams, fully agreed that the role AI will play in our lives was only going to increase. And consideration of it requires “difficult conversations” even about fundamental questions like rights and liabilities, with all the necessary stakeholders.

“Fundamentally, If changes to the law are necessary, then it is for parliament to evaluate and make,” he argued, and take all of that background into account.

Commenting the case, Herbert Smith Freehills professional support consultant Rachel Montagnon said: "In practice, if you introduce the possibility of an AI as an inventor then when it comes to challenging a patent's validity it's a completely different process – with courts needing to assess of whether an AI was being ‘inventive’ in creating the invention, rather than the invention just being the obvious conclusion when all avenues were explored. 

"In previous rounds of this case, the High Court and the Court of Appeal agreed that only an entity with legal personality can hold and transfer intellectual property rights, reaffirming that a human inventor is indeed needed. 

"In any event, the products of AI should be, and are already being, protected by patents. UK copyright law also provides that the person arranging the computer generated work should own the copyright in it, which is another protection for the products of an AI system.  

"It is clear that there is still discussion to be had about IP rights and AI, beyond this case. A recent Intellectual Property Office Consultation might have resolved this issue via legislation but the consultation concluded that no change in the law was needed at this point in time."  

Thaler is trying to list his AI machine DABUS as an inventor behind two patent applications - GB18116909.4 and GB1818161.0 - which were filed on 17 October 2018 and 7 November 2018, respectively.

However, upholding an earlier UK Intellectual Property Office (IPO) December 2019 decision to reject the applications, the Court of Appeal held in a split verdict that it is ‘implicit’ in the wording of section 13(2) of the Patents Act “that only persons can be inventors”. 

The case now awaits judgment to be handed down.

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