Supreme Court decision on whether AI can be an inventor coming this Wednesday

Following a hearing in March, the UK Supreme Court will hand down its highly anticipated judgment in Thaler v Comptroller General at 9.45am on Wednesday 20 December. As an early Christmas present to AI and IP fans who have been closely following the case over the last five years, the Supreme Court will finally settle whether UK patent law allows an AI system to be named as the inventor for a patent application. Ahead of the decision, this article reviews the debate so far and the impact of a decision in either direction.

How have we got here?

With the rise of generative AI, the potential for AI systems to create has exploded into the public consciousness over the past 12 months. This has spurred much debate about how our existing IP framework applies to these new creations. Perhaps ahead of its time, back in 2018 Dr Stephen Thaler (with the help of the Artificial Inventor Project) filed a series of patent applications with patent offices around the world to test they would register applications for patents which named an AI system (DABUS) as the inventor.

When filing these applications Dr Thaler took an uncompromising stance. As his legal team explained to the Supreme Court, he genuinely believes that the inventions were autonomously generated by DABUS and he doesn’t feel it is open to him to name himself as the inventor. Success for these test cases has been limited so far as the majority of the applications have been rejected. While appeals are pending in several jurisdictions, only South Africa has so far agreed to register an application with the inventor described as "DABUS, The invention was autonomously generated by an artificial intelligence”.

In the UK, 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 The UKIPO deemed the applications withdrawn on the basis Dr Thaler had failed to comply with section 13(2) of the Patents Act 1977 by identifying the person who he believed to be the inventor and how he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. This decision was upheld on appeal to the High Court and further upheld by the Court of Appeal (with Arnold and Laing LJJ in the majority and Birss LJ dissenting). For our analysis of the High Court and Court of Appeal decisions see here, here and here.

Dr Thaler sought permission to appeal further following the Court of Appeal decision in September 2021. This created an interesting dynamic, as in October 2021, the UKIPO issued a consultation on AI and patents which sought views on whether (i) the definition of an inventor should be expanded to include humans responsible for an AI system that devises inventions, or (ii) the law should go further and allow patent applications to identify an AI as the inventor. The consultation closed in January 2022. In June 2022, the UKIPO published its response to the consultation deciding to make no changes to the law. The UKIPO stated that there was no evidence that UK patent law is currently inappropriate to protect inventions made using AI.

Perhaps no coincidence, the Supreme Court granted permission to appeal in August 2022. With no immediate prospect of legislative change, the Supreme Court decision is currently the only avenue which could open the possibility of naming an AI as an inventor on UK patent application.

What is the Supreme Court going to decide?

The three issues the Supreme Court will decide are:

1. 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?
   
   
2. Does the 1977 Act provide for the grant of a patent without a named human inventor?
   
   
3. 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?

What's at stake?

If the Supreme Court rejects the appeal the UKIPO will continue to require a human to be named as an inventor on a UK patent application. In the longer term this may create uncertainty about the patentability of certain types of invention created using AI. However, in the short term this result is unlikely to cause much disruption for businesses. Given the current state of AI technology, most will consider AI systems as tools which can be used by human inventors and will not have a problem identifying one or more humans to name as inventors in their patent applications. There may be scenarios where the use of an AI system adds new potential classes of individuals (e.g. AI developers) who may have a claim to be an inventor. This would require the application of existing case law regarding inventorship to a new situation. However, the results of this analysis should be predicable and the usual commercial solution of ensuring that rights to inventions are managed in commercial contracts would still apply.

If the Supreme Court accepts the appeal and allows an AI system to be named as an inventor, the impact on business is less predictable and much will depend on the guidance the Court gives on who has the right to apply for the patent. Dr Thaler's test case was very simple as he had created DABUS, owned the copyright in the DABUS system, owned the hardware on which it ran and had controlled its operation. The real world is far more complex, and the Supreme Court will be mindful of the need to provide rules which can be applied in a wide range of contexts. The risk for businesses is that the Supreme Court displaces the current rules about who can apply for a patent in circumstances where AI technology is used in the invention process. This may have immediate impacts when managing inventions generated by certain collaboration or research agreements.