UK Supreme Court considers AI inventorship

White & Case Tech Newsflash

On 2 March, the UK Supreme Court heard the arguments in Thaler v Comptroller-General of Patents, Designs and Trademarks, the latest in a growing line of international jurisprudence grappling with issues raised by the use of artificial intelligence ("AI") in conceiving patentable inventions. 

Background of the UK Case

In 2019, the Comptroller-General of Patents, Designs and Trademarks (the "Comptroller") refused to accept two patent applications submitted by Dr Stephen Thaler for inventions created by his AI machine "DABUS" and deemed them to be withdrawn on the ground that they did not satisfy s.13(2) of the Patents Act 1977 (UK) (the "Patents Act"), which requires the applicant to identify a person as the inventor and to indicate how they had derived their right to be granted the patent. Thaler's appeal of the Comptroller's decision was subsequently dismissed in the High Court and the Court of Appeal.

Submissions heard by the Court

During the hearing, Thaler made the following arguments:

1.  There is no substantive requirement in the Patents Act that an invention must have a human inventor, only that the inventor must be the "actual deviser" of the invention, as opposed to "a deemed or pretended deviser". ¹
2. Specifying "no person" as the inventor of AI-generated creations would be in line with the purposive interpretation of the Patents Act, which aims to promote innovation, disclosure of trade secrets and commercialisation of new inventions, including those that are now being automated.

In its response, the Comptroller argued that:

1. Accepting an AI as an inventor would entail fundamental policy considerations that are better suited to be assessed by the Parliament, rather than by the Supreme Court, highlighting that while the Parliament made express provisions in relation to ownership of computer-generated works in statutes that relate to other intellectual property rights, it has not similarly amended the Patents Act. 
2. Referencing several sections of the Patents Act² and case law³  that refer to the inventor as a person, it emphasised that the purpose of identifying the inventor under s.13(2)(a) of the Patents Act is to satisfy their "moral right", which would only make sense if the inventor was a natural person.

Comment

As Lord Hodge observed during this hearing, the development of AI brings significant challenges to the current law in the UK, including in relation to intellectual property rights. As the intangible assets created with the support of AI become more sophisticated and valuable, as well as less influenced by human input, the law regarding ownership of such assets (including patents) will need to be carefully addressed. If the Court of Appeal's decision is upheld, there will remain considerable uncertainty regarding the protection of AI-developed inventions under UK patent law, and further legislative developments may be needed. We eagerly await this decision, as it will be interesting to see if it aligns with the findings in the vast majority of foreign jurisdictions. In particular, the US Federal Circuit in August 2022 upheld the initial rejection by the United States Patent and Trademark Office of Thaler's analogous patent applications while holding that the US Patent Act unambiguously requires that inventors must be human beings.⁴  Thaler petitioned the US Supreme Court to review this decision on 17 March, but it remains to be seen whether the US Supreme Court will take up his case.⁵ Similarly, in July 2022, the European Patent Office issued its written decision confirming that under the European Patent Convention, an inventor designated in a patent application must be a human being.⁶  The decisions from the relevant court or office of Australia,⁷  Canada⁸  and Germany⁹ are likewise consistent with this trend. In addition, while the South African Companies and Intellectual Property Commission accepted Dr Thaler's patent application in 2021,¹⁰ we note that South Africa's depository patent system only examines patent applications for compliance with formalities.¹¹

_{1 Lord Hoffmann in Yeda Research and Development Company Ltd v Rhone-Poulenc Rorer International Holdings [2007] UKHL 43.
2 Ss.7(2)(c), 13(1), 13(2)(a), 13(3) of the Act.
3 Yeda Research and Development Company Ltd v Rhone-Poulenc Rorer International Holdings [2007] UKHL 43.
4 Thaler v Vidal, No. 2021-2347 (Fed. Cir. 5 August, 2022)
5 Thaler v. Vidal, Docket No. 21-02347 (Fed. Cir. Sep 24, 2021)
6 European Patent Office Communication
7 See Commissioner of Patents v Thaler [2022] FCAFC 62
8 See Patent 3137161 Summary
9 See "German Decision Could Provide an Answer to AI Inventorship"
10 Companies and Intellectual Property Commission - Acceptance of Complete Specification 
11 See "Intellectual Property Policy of The Republic of South Africa Phase I"}

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