The UK Supreme Court has now reaffirmed the previous decisions of its courts in dismissing the appeal of Dr Thaler and reiterating that inventions devised solely by AI are ineligible for patent protection. This conforms to the decisions of other national jurisdictions and highlights the present limitations of UK patent law against the ever-increasing technological advances of AI.

Relevant extracts of the UK Patents Act 1977 (the Patents Act)

Section 7 – this section states that any person can apply for a UK patent, but limits the entitled owners of a patent for an invention to being either: (i) the inventor or inventors of the invention; (ii) a person or persons who were entitled to the invention at the time of its devising by a rule of law or agreement; or (iii) the successor(s) in title to the inventor(s).

Section 13 – this section requires that the inventor or inventors of an invention are identified by the applicant of a UK patent application for that invention within a 16-month time period that is set from the date of filing of the application.

Background to the decision

In 2018, Dr Stephen Thaler filed two patent applications for a food container and search and rescue beacon. He filed the applications in his own name, but stated that he was not the inventor of either invention and that the inventor was instead an AI machine called DABUS. Dr Thaler alleged that he had acquired the right to both inventions via his ownership of DABUS.

The UK IPO refused both patent applications on the basis that the designation of the AI machine as an inventor did not meet the requirements of Sections 7 and 13 of the Patents Act. Upon his appeal to the High Court, Dr Thaler's requests to overturn the IPO's decisions were also rejected. As to the question of whether the term "inventor" extended to "things" as well as people, it was determined that the Patents Act supported the definition of the term "inventor" as the person who actually devised the Invention. "The term 'deviser' at least implies someone devising something. In short, the natural reading is that the inventor is a person and the invention a thing" per Marcus Smith J.

On appeal to the Court of Appeal, the decision of the High Court was maintained, with the Court of Appeal finding that machines were not inventors within the meaning of the Patents Act. Birss LJ (dissenting) identified that the term "actual deviser" was taken from a previous iteration of the Patents Act, which specified that this term referred to the person who actually devised the invention. Birss LJ took this definition together with the express wording referring to a "person" in Section 7 of the Patents Act, thereby concluding that the inventor of a patent had to be the person who devised the invention. The remaining Lord Justices reached the same conclusion by applying the dictionary definition of the term "deviser", finding it to mean "a person who devises; a contriver, a planner, an inventor."

Although the Lord Justices agreed on the interpretation of the Patents Act, Birss LJ disagreed with the determined course of action resulting from that interpretation. He argued that the application should have been allowed to proceed to examination and grant, subject to any third-party challenges. This opinion was not shared by the majority of the Court of Appeal.

The court also identified that it was not possible to comply with Section 13 of the Patents Act by not identifying a person as an inventor and instead asserting that the inventor is not a person, and referred to its previous analysis that Section 7 required the inventor to be a person.

Supreme Court decision

The Supreme Court addressed three issues:

• The scope and meaning of the term "inventor" in the Patents Act.
• Whether Dr Thaler was the owner of any invention in any technical advance made by DABUS and entitled to apply for and obtain a patent in respect of it.
• Whether the Hearing Officer was entitled to hold that Dr Thaler's two applications should be taken to be withdrawn.

The Supreme Court considered Sections 7 and 13 of the Patents Act and held that an inventor within the meaning of the Act must be a natural person. The ordinary meaning of the term "deviser" was determined to be "a person who devises a new and non-obvious product or process". It was not deemed possible for DABUS to be classed as a person, and so it could not be a deviser, or considered to be an inventor under the Patents Act.

Notwithstanding the difficulties in light of the fact that DABUS could not be considered an inventor, Dr Thaler contended that he was still entitled to obtain granted patents for DABUS's inventions on the basis of his ownership of DABUS. Just as "the farmer owns the cow and the calf", Dr Thaler submitted that, as owner of DABUS, he was the owner of all rights in DABUS's creations under the doctrine of accession. The doctrine of accession states that new tangible property produced by existing tangible property is owned by the owner of the existing property.

The Supreme Court viewed Dr Thaler's submissions with regards to the doctrine of accession to be a mischaracterisation of an invention as being tangible property, such that its title could pass from a machine to the owner of that machine. In the case of Dr Thaler's applications, the court was considering concepts for new and non-obvious devices which had been generated by DABUS. There was no basis for applying the doctrine of accession in these circumstances as the invention was not a tangible piece of property. There was therefore no entitlement for Dr Thaler to apply for a patent on the grounds of that doctrine.

Taking the final issue, on the basis that: (i) Dr Thaler had failed to identify any natural persons who were the inventor of the inventions of his patent applications; and (ii) Dr Thaler's ownership of DABUS did not provide a proper basis for his claim of entitlement to the grant of the patents, the Supreme Court also concluded that the Hearing Officer for the Comptroller had been entitled to refuse the two patent applications.

The appeal was therefore dismissed in full.

Implication of the decision

Dr Thaler has also brought actions in respect of the same subject matter in other national jurisdictions. The US Federal Circuit upheld the US Patent and Trademark Office's rejection of Dr Thaler's patent applications, holding that the US Patent Act unambiguously required that inventors must be human beings. The US Supreme Court declined to hear his challenge. Consistent decisions were also made by the European Patent Office and the relevant Courts in Australia, Canada and Germany.

The Supreme Court's decision reinforces the position under current UK law that inventions created entirely by AI without any human input are not patentable in the UK. At present, there is ordinarily a level of human involvement or supervision in the running of AI algorithms to the extent that a person contributing to the running of such an algorithm could be named as an inventor of inventions devised by the algorithm. However, as technological advances in the field of AI increase, this is less likely to be the case in coming years. It is possible that we may see further challenges to the orthodox interpretation of the wording in the Patents Act in the future.

It seems that the Supreme Court was also aware of the limitations of its judgment as it acknowledged the advances of AI and the policy issues that may arise alongside them. Elisabeth Lang LJ in the Court of Appeal stated: "If patents are to be granted in respect of inventions made by machines, the 1977 Act will have to be amended." Therefore, an entire overhaul of the legislative position could be coming in the near future. This would not be without its own issues, however, as legislatures would have to balance the many interests and stakeholders in the quickly evolving world of AI.