UK Supreme Court rejects AI as patent inventor in landmark case

Court unanimously upheld the decision of Intellectual Property Office

The UK Supreme Court has ruled against a US computer scientist, Stephen Thaler, in his attempt to register patents for inventions generated by his AI system.

Thaler, founder of Imagination Engines Inc, a company specialising in advanced artificial neural network technology, had sought patents for two inventions, a beverage holder, and an emergency light beacon, created by his AI system known as DABUS (Device for the Autonomous Bootstrapping of Unified Sentience).

However, the UK Intellectual Property Office (IPO) rejected his application in 2019, contending that an inventor must be either a human or a company, and not a machine.

Thaler contested the decision in both the High Court and the Court of Appeal, but his plea was rejected again.

Thaler then appealed to the UK Supreme Court, arguing that DABUS independently conceived a beverage holder and a light beacon, and therefore, he should have rights over the inventions.

However, the Supreme Court unanimously upheld the IPO's decision, citing current provisions of UK patent law. The court's judgment pointed out that "an inventor must be a person" according to existing patent laws.

Judge David Kitchin, in the written ruling, said that the IPO was correct in determining that DABUS lacked the status of an inventor for any novel product or process outlined in the patent applications. Judge Kitchin clarified that the scope of this appeal did not extend to the broader question of whether independently generated technical advancements by AI-driven machines should be eligible for patent protection. He also noted that the appeal did not address the question of whether the term 'inventor' should encompass machines powered by AI.

The Supreme Court dismissed Thaler's argument asserting his entitlement to apply for patents on the basis that he was the AI's owner.

The ruling has significant implications for the evolving landscape of AI and intellectual property rights. Patents are granted for inventions that are new, inventive, and capable of being used, and the decision underscores the current legal framework's insistence on human inventors.

Thaler's legal team expressed dissatisfaction with the decision, stating that "the judgment establishes that UK patent law is currently wholly unsuitable for protecting inventions generated autonomously by AI machines."

Thaler had previously faced a similar setback in the United States, where the Patent and Trademark Office rejected his appeal, a decision upheld by the US Supreme Court's refusal to hear the case.

"Rejecting AI-generated patents curtails our patent system's ability - and thwarts Congress's intent - to optimally stimulate innovation," Thaler argued in the US court.

Supporters of Thaler's case, which included Harvard Law professor Lawrence Lessig and other scholars, argued that the decision by the US court posed substantial risks to investments amounting to billions of dollars, both presently and in the future. They further contended that it not only posed a threat to the competitiveness of the United States but also contradicted the clear language of the Patent Act.

Commenting on UK Supreme Court decision, Giles Parsons, a partner at law firm Browne Jacobson, noted that, for now, AI is considered a tool rather than an agent in the patent system.

"I do expect that will change in the medium term, but we can deal with that problem as it arises," Parsons added.