Can a machine be considered to be an inventor?

To date, the answer is a resounding no.

In the recent case of Stephen L Thaler v Comptroller-General of Patents, Designs and Trade Marks [2020] EWHC 2412 (Pat), the High Court of England and Wales, sitting as the Patents Court, upheld a decision of the UK Intellectual Property Office (UKIPO) that a patent application by an individual which named an AI machine, called DABUS, as inventor, would be dismissed. This was because under the Patents Act 1977 an inventor has to be a natural person, rather than a legal person.

This decision is consistent with the approaches taken by the European Patent Office and the United States Patent and Trademark Office which both rejected patent applications citing DABUS as the inventor largely on the same basis. In both cases, this was because DABUS was an AI machine rather than a natural person, as required by their respective legal frameworks.

What did the High Court consider?

The applicant, Dr Thaler, had filed two patent applications in his own name at the UKIPO, citing DABUS as the sole inventor. The UKIPO ruled that a natural person must be identified as the inventor. In addition, the UKIPO was not satisfied that Dr Thaler had derived the right to apply for the patent by virtue of his ownership of DABUS.

The main legal ground on which Dr Thaler appealed this decision concerned the interpretation of Section 7 of the Patents Act, which governs who is allowed to apply for a patent.

The court noted that it is well established that only a natural or legal person can make a patent application. As a natural person, Dr Thaler could make an application to the extent that he had the right to be granted a patent. As DABUS was not a person, it was not able to own and so transfer property rights to the invention to Dr Thaler.

Dr Thaler also contended that, as he owned DABUS, he owned its output and he sought to draw parallels with the law of copyright relating to computer-generated works. The court rejected this, noting that unlike copyright, whereby rights vest immediately in the creator upon the creation of an original work, inventing a new technology did not result in a patent being automatically granted to the inventor. Ultimately, a patent right is acquired only by application by a person.

Does the law need updated?

The DABUS decision raises a number of important policy issues for the patentability of inventions by AI and these currently form part of a wider public consultation by the UKIPO. Similar consultations are also ongoing in the US and before the World Intellectual Property Organisation.

For now, though, those seeking to protect AI inventions should consider using alternative forms of protection where possible. For businesses using or developing AI, patent laws as they stand will not necessarily protect a growing number of inventions likely to use AI in the invention process. With that in mind, those currently using AI to innovate should carefully consider what level of human involvement will be required to obtain a patent.

Technology, Media & Telecoms

With very few areas not impacted by technology, media and telecoms, we remain focused on ensuring we stay ahead of the curve in advising clients of the ever-increasing body of law, regulation and policy affecting the sector.

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