Thaler v Comptroller-General: Part 2 – What now for AI inventions following Thaler?

Following the Thaler decision and pending any further possible appeal, the UK's position on AI inventors is at first sight very clear; under the Patents Act 1977 an AI system cannot be named as an inventor and the right to apply for an invention can only originate from a human inventor. However, the decision leaves two unanswered questions. The first is expressly recognised in the judgment. The second (related) question was not discussed in Thaler but is implicit in the provisions of the Patents Act regarding challenges to inventorship and entitlement. This Part 2 explores these questions and looks ahead to how the law may change in future.

Part 1 of this article summarised the decision in Stephen L Thaler v The Comptroller-General of Patents, Designs And Trade Marks [2020] EWHC 2412 (Pat).

Question 1: Is the owner or controller of an AI system the inventor of any inventions created by the system?

Dr Thaler argued that DABUS was the inventor for his applications and disavowed any role in devising the inventions. However, at several points in the Thaler judgment Smith J suggests that his decision should not be taken as precluding an argument in future that the owner or controller of an AI system that "invents" something could themselves be said to be the inventor. At one point, Smith J even goes so far as to say that it would have been far easier for Dr Thaler to argue his case in this way. Does this mean that Dr Thaler could file applications for other inventions devised by DABUS and name himself as the inventor based on his ownership/control of DABUS?

Approaching this question from the perspective of section 7(3) (the inventor is the actual deviser of the invention) and Yeda (the actual deviser is the natural person who came up with the inventive concept) would lead to a detailed investigation of the interactions between DABUS and Dr Thaler which gave rise to the inventions. Smith J and the UKIPO assumed in Dr Thaler's favour (for the purposes of their decisions) that he was correct in his assertion that DABUS was fully responsible for identifying and solving the problems disclosed in the applications and recognising the novelty and salience of the solutions. They did not investigate further the actual role which Dr Thaler may have played in devising the inventive concepts (e.g. the extent to which his involvement in developing DABUS may have contributed).

Generalising from Dr Thaler's applications, it appears inconsistent with the approach to the definition of "inventor" endorsed by Smith J, to state that a person could be considered the inventor of any inventions devised by an AI system purely by virtue of owning that system. To take an extreme example, purchasing an off-the-shelf

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