Supreme Court says AI cannot be an inventor in ‘narrow ruling’: Reaction

The Supreme Court ruled today in London that an artificial intelligence (AI) machine cannot be legally named as an inventor to secure patent rights, as only a “natural person” can apply for patents under the current law.

The decision correlates with the findings of courts in Australia, Germany, New Zealand, Taiwan, the US and the European Patent Office, and deals yet another blow to physicist Stephen Thaler’s quest to establish that AI systems can be inventors and should be allowed to secure patents.

As Lord Justice Lord Kitchin noted, the appeal is just “one of a number of test cases” to emerge as AI advances, and it “raises issues of some importance”.

The long-running case arose in 2018 when Thaler filed patent applications on behalf of his creativity machine, DABUS, for a food or beverage container and a light beacon that attracts attention in an emergency.

The hearing officer for the Comptroller-General of Patents and the High Court rejected the applications on the basis that the machine did not qualify as an inventor within the meaning of the 1977 Patent Act.

In 2021, the Court of Appeal of England and Wales agreed with these decisions but, in a notable dissension, Justice Colin Birss stated that he would have allowed the applications to proceed.

Today, the Supreme Court firmly and unanimously sided with the findings of the hearing officer and the lower courts. However, it explicitly stated that it has not ruled on the broader question of whether an invention generated by an AI ought to be patentable, potentially leaving the door open for further scrutiny of the issues at the heart of this case.

Commenting  on the decision, a spokesman for the UK Intellectual Property Office (UKIPO) said: “We welcome the clear and unanimous judgment of the Supreme Court and the clarification it gives as to the law as it stands in relation to the patenting of creations of AI machines. We recognise however that there are legitimate questions as to how the patent system and indeed intellectual property more broadly should handle such creations.

“The UK government is keen to make the UK a global centre for AI and data-driven innovation. The UK government published its response to its consultation on various questions around AI and IP, including whether IP protection should be available for products or processes created by an AI in June 2022.

“The response concluded that there should be no legal change to UK patent law now, and noted that many share the view that any future change would need to be at an international level. The decision of the Supreme Court does not alter that conclusion.”

WIPR gauges reaction from IP attorneys on the latest decision in this landmark case.

Yohan Liyanage, partner at Linklaters: “The UK is the first country in which the case has been heard by the highest court, demonstrating the importance which the UK courts are attributing to new legal issues arising from AI developments.”

“Similar issues have been considered by foreign patent offices and courts in several parallel cases across the world. However, the UK is the first country in which the case has been heard by the highest court, demonstrating the importance which the UK courts are attributing to new legal issues arising from AI developments.

“In addition to considering whether an AI system can be an inventor, the Supreme Court also considered whether an owner, creator and user of the AI system is entitled to a patent for an invention created by the AI system. The Supreme Court rejected this proposition, holding that there is also no mechanism under UK law under which the rights to the inventions could have transferred to the owner, creator and user of the AI system.

“Today’s decision provides confirmation from the UK’s highest court on the availability of patent protection for inventions said to have been autonomously created by AI systems.

“However, the Supreme Court did not consider whether DABUS did in fact independently create the inventions in question. As it is not clear whether there are any AI systems which are genuinely capable of developing inventions without any human involvement, today’s decision may remain of limited applicability.

“Given the striking speed at which the AI field is advancing, the issue of AI-generated inventions may need to be addressed again in the future. If the UK government is serious in its aspiration to establish itself as an ‘AI superpower’, legislative intervention may be required to allow patentability of inventions which are independently created by AI systems.”

Nick White, partner at Charles Russell Speechlys: “The legal framework remains firmly rooted in historical context.”

"While it is widely acknowledged that under English law AI systems are not persons and cannot own IP, this case addresses a specific and rather narrow question regarding whether an AI system can be recognised as an inventor on a patent application.

“The Supreme Court confirmed that under the Patents Act 1977 an inventor must be a human, and cannot be a machine.

“As AI systems continue to advance in sophistication and capability, there is no denying their ability to generate new and non-obvious products and processes with minimal, or perhaps even without any, ongoing human input.

“Nevertheless, the legal framework remains firmly rooted in historical context, and it does not recognise AI systems as inventors under patent law, or as capable of owning IP. Change may be on the horizon but it will most likely come from the policy makers, rather than the judges."

Rajvinder Jagdev, partner at Powell Gilbert: “The court has explicitly stated that it has not ruled on the broader question of whether an invention generated by an AI ought to be patentable”

“For now, the Supreme Court has given certainty that inventors must be “a natural person”. The judgment does not preclude a person using an AI to devise an invention. In such a scenario, it would be possible to apply for a patent provided that person is identified as the inventor. The judgment alludes that had this been the scenario it had been asked to consider, the outcome may have been different.

“The court has explicitly stated that it has not ruled on the broader question of whether an invention generated by an AI ought to be patentable.

“In analysing section 7 of the Patents Act, the court made reference to the intentions of parliament, indirectly and correctly deferring debate on the broader question to parliament, referring to this as a policy issue.

“The UKIPO ran a consultation on this very question in 2021 and published its response in June 2022, concluding at that time that AI was not sophisticated enough to ‘invent’.

“Notably, this response was published before the public launch of Chat GPT in November 2022, which marked an epoch change in the sophistication of publicly available AIs, and more recent versions are even more sophisticated.

“It is now for parliament to decide whether or not to permit AIs to be inventors: whether it will or not remains to be seen.”

Richard Johnson, chairperson, partner and patent attorney at Mewburn Ellis: “There is an open question of how much interaction between a person and a machine is needed for the person to qualify as the ‘deviser’ of a concept produced by the machine.”

“A key point of decision is that the doctrine of accession cannot be applied to concepts created by a machine. That is, the owner of the machine does not automatically own any concept or the right to pursue patent protection for them.

“From a practical perspective, to successfully pursue patent protection in the UK for ideas developed using machines, it will be necessary to name a person, such as the operator or owner of the machine as inventor.

“An unexplored issue here is around whether there actually exists a class of invention where there is so little human intervention that it is not possible to identify a human inventor, and therefore patent protection is not available.

“This judgment did not consider this issue. So there is an open question of how much interaction between a person and a machine is needed for the person to qualify as the “deviser” of a concept produced by the machine, and therefore consider themselves in good faith as the inventor.”