Rapid Reaction: Who needs an inventor? UK Supreme Court hears DABUS AI patent appeal

What's in issue?

In 2018 by Dr Thaler filed two GB patent applications naming the creativity machine "DABUS" as the inventor. Dr Thaler stated his right to file the applications was derived from his ownership of DABUS. The UKIPO deemed the applications withdrawn on the basis Dr Thaler had failed to comply with section 13(2) of the Patents Act 1977 by identifying the person who he believed to be the inventor and how he derived his right to apply for the invention. For our analysis of the High Court and Court of Appeal decisions upholding the UKIPO’s approach see here, here and here.

The three issues for the Supreme Court to decide are:

(a) Does section 13(2)(a) of the Patents Act 1977 (the "1977 Act") require a person to be named as the inventor in all cases, including where the applicant believes the invention was created by an AI machine in the absence of a traditional human inventor?

(b) Does the 1977 Act provide for the grant of a patent without a named human inventor?

(c) In the case of an invention made by an AI machine, is the owner, creator and user of that AI machine entitled to the grant of a patent for that invention?

Dr Thaler argues that he has complied with s13 by stating his honest belief that there was no human inventor and that he derived his right to apply for the patents by ownership of DABUS. His counsel submitted that for Dr Thaler to identify himself as the inventor would be requiring him to make a false statement as he was not (on facts assumed by the parties for the purposes of the appeal) the "actual devisor" of the invention under section 7. While s13 referred to a "person", it was argued that the section as a whole should be understood as a procedural matter rather than imposing a substantive bar to patentability for an invention which had undergone examination by the UKIPO and found to be otherwise patentable. Instead, the Court was invited to focus on the rules regarding entitlement to file an invention under s7(2)(b) and hold that the common law principles of accession, first possession and the right to enforce a confidence in the information defining an invention were all rules of law which entitled Dr Thaler to the property in the inventions.

The Comptroller General takes the view that s13 is more than a formality and goes to a fundamental purpose of the patent system; to recognise the moral right of an inventor to be named as such for their inventions. This is not a right which applies to a machine. The Comptroller General also relied on the decision in Yeda, where the House of Lords held that an inventor under the Patents Act was "the natural person who came up with the inventive concept.” While s13 didn’t require the Comptroller to assess the veracity of Dr Thaler's statements, it was required to assess whether they were adequate to satisfy the requirements to name the inventor and the basis on which Dr Thaler derived his right to apply for the inventions. Stating that DABUS was the inventor did not meet this threshold.

The bigger picture

Stepping back from the arguments regarding interpretation of the Patents Act, two bigger pictures issues were clearly at play during the hearing. The first is whether an invention without a human inventor can obtain patent protection in the UK. While some may question whether current AI technology is capable of making inventions without substantial human input, the answer to this question is likely to become more acute as the technology develops. It also touches on policy issues; should AI inventions be incentivised or should human inventive activity retain a special status?

If you always need a human inventor, the second policy issue which arises is which human should you name? The use of AI technology in the invention process can involve a range of individuals, including those who develop the underlying technology, those who train models based on that technology and those who deploy trained models. Where all of these individuals are involved, which of them should be named as the inventor or inventors? Any guidance provided by the Court on this issue will be of great interest to those involved in the use of AI technology in the invention process.

The Justices were actively involved in questioning both sides and it is hard to know which way they are currently leaning. Lord Hodge made clear at the end of the hearing that they appreciate the significance of the decision they have been asked to make. A judgment can be expected "as soon as reasonably practicable".