The English Court of Appeal has recently ruled that patents cannot be granted to inventions that were created by artificial intelligence. The ruling upholds a previous decision made by the English High Court which held that an invention can only be patented if the inventor is a ‘natural person’. This decision comes at a time when Artificial Intelligence is becoming increasingly commonplace in various sectors of technology. However, this decision begs an important question: is the law keeping up with developments in AI technology?
As we reported last year, initially the applicant, Dr Thaler, applied for the patent, listing his AI machine ‘DABUS’ as an inventor. The application was refused not only by the UKIPO, but also by the European Patent office and the United States Patents and Trademark Office. The matter went to the High Court of England and Wales in October 2020, where Mr Thaler’s attempt to give DABUS its claim to fame failed. This year, he applied to the Court of Appeal so that the matter could be reconsidered.
Mr Thaler’s appeal hinged upon two crucial questions:
- Can patents be granted to a non-natural person like DABUS?
- Could the patent be transferred from DABUS to Mr Thaler, who is a natural person?
Regarding the first, Laing LJ referred to s. 7(1) and (2) of the Patents Act 1977 which requires that an inventor must be a ‘person’ in order to be granted a patent. When considering the definition of a person, the judge pointed to the previous judgment of the High Court which held that the definition of ‘inventors’ in the Patents Act was restricted to human beings or ‘natural persons’. While Dr Thaler did not argue that DABUS was a person – legal or artificial – he did try to argue that DABUS should be treated as a person because it had the ability to ‘devise’ the invention as required by s. 7(3) of the Act. However, Laing LJ did not accept this, arguing that the requirement was twofold; the inventor must actually be a person in order to ‘devise’ an invention under the meaning of the Act. As such, the judge concluded that DABUS did lack the necessary personhood to be granted a patent.
Regarding the second question, Laing LJ faced the same issue: if DABUS could not have been granted a patent in the first place, due to its lack of natural personhood, then DABUS also cannot transfer a patent to another person. As such, even Dr Thaler, as a natural person himself, has no right to have the patent transferred to him because it would have to be granted to DABUS in the first instance.
The judges were not, however, unanimous in their opinion. Birss LJ gave a dissenting opinion, which held that Mr Thaler should be granted a patent under s. 13(2) of the Act because he gave a statement which identified the person that he genuinely believed was the inventor, and he also successfully indicated the derivation of his right from that person. Such an opinion is a substantial departure from not only the UK’s traditional interpretation of inventorship, but also that of the EU and the US – so it may be worth watching to see if Birss LJ’s rationale appears in the courts again elsewhere.
Drawing the Line between Property and Patents
Laing LJ considered that while it is generally accepted that “the owner of a thing, such as a tree, is the owner of the fruits of that thing”, there are still “no such rules in the context of patents”. The judge therefore appeared to be demarcating the line between mere property law and patent law; while property law allows a person to make claim to things created by what they own, patent law concerns the rights afforded to the person who invented the thing. The former concerns ownership; the latter concerns inventor credit and licensing.
Essentially, this judgment questions whether an AI invention can ever actually be patented, which could potentially threaten the development of AI technology and investment in the sector. For better or for worse, it seems that patent rights (at least in the UK) will remain in the physical hands of human beings for now – although other countries have gone in the opposite direction with decisions in both Australia and South Africa approving DABUS being named as the inventor. Back in the UK, it remains to be seen whether Dr Thaler will appeal to the Supreme Court – failing that, a revision of UK statutory provisions might be necessary to make DABUS an inventor. In terms of possible changes, the Intellectual Property Office issued a consultation back in September 2020 on how intellectual property law relates to Artificial Intelligence technology and the development of future policy relating to AI and IP. In March 2021, the IPO published its response to the consultation. The UK IPO now intends to consult later this year on a range of policy options for protecting AI-generated inventions. Therefore, this remains a rapidly evolving area.
This article was co-written by Jamie McGowan, Trainee Solicitor.