In a landmark decision, the UK Supreme Court (UKSC) recently ruled that AI cannot be considered an inventor under UK patent law. The judgment, issued on 20 December 2023, aligns with previous rulings from lower courts and the UKIPO, setting a significant precedent in the legal landscape surrounding AI and intellectual property.
Background:
In 2018, Dr. Stephen Thaler filed patent applications for two inventions: a food or beverage container and a light beacon designed for emergency situations. What made these applications unique was the absence of a designated human 'inventor'. Instead, Dr. Thaler attributed the creation of these inventions which were generated by an AI machine named ‘DABUS’. Asserting his ownership of DABUS, Dr. Thaler claimed the right to patent grants based on his association with the machine.
The UKIPO reviewed the applications and concluded that DABUS did not meet the criteria of a 'person' as outlined in sections 7 or 13 of the Patents Act. Consequently, DABUS couldn't be recogniSed as an inventor, nor did it possess any rights that could be transferred. Dr. Thaler's ownership of DABUS didn't confer him the entitlement to patent grants. As a result, the applications were deemed withdrawn.
Dr. Thaler pursued appeals, first to the Patents Court and then to the Court of Appeal, but to no avail. In the Court of Appeal, the majority opinion, articulated by Arnold LJ and Elisabeth Laing LJ, emphasised that an inventor, as defined by the Act, must be a person. However, a dissenting opinion emerged from Birss LJ in the Court of Appeal. While acknowledging that DABUS couldn't qualify as an inventor, Birss LJ emphasised the importance of Dr. Thaler's genuine belief regarding the origin of the inventions. He argued that Dr. Thaler's assertion, although based on an AI machine's creation, shouldn't obstruct the grant of patents if he genuinely believed in the legitimacy of his claim.
However, the SC recently ruled that AI cannot be recognised as an inventor due to the requirement of inventorship by natural persons. Despite recognising the possibility of listing the owner of an AI-generated invention as both the inventor and owner, the court held that DABUS lacked the legal personality to be an inventor.
Key Points of the UKSC Ruling:
Definition of 'Inventor': The UKSC clarified that under the Patents Act 1977, an 'inventor' must be a natural person. The AI system, in this case, Dr. Thaler's Dabus, does not meet this criterion as it is not a person, let alone a natural one.
Ownership and Patent Rights: Despite Dr. Thaler's ownership of Dabus, the court held that there was no 'inventor' through whom he could claim patent rights. Consequently, the patent applications were deemed withdrawn for failure to satisfy the provisions of the Act.
Policy Implications: The judgment raises critical questions about the future of patent law in relation to AI-generated inventions. The court highlighted policy issues regarding the purpose of the patent system and the need to incentivise technical innovation while ensuring public access to new advancements.
The ruling prompts reflection on whether legislative changes are necessary to accommodate AI-generated inventions within patent law. As AI continues to play a pivotal role in innovation, the issue of patentability becomes increasingly pertinent.
Lord Kitchin emphasised the ordinary meaning of "inventor" as a natural person, highlighting the exhaustive code in the Patents Act for determining patent entitlement. The decision underscores the legal complexities surrounding AI-generated inventions and raises pertinent questions about ownership, accountability, and patentability in the era of AI.
While the ruling doesn't address the patentability of AI-generated inventions, it highlights the urgent need for policy considerations to address rapid advancements in AI technology and their implications for IP law. The case sets the stage for future discussions and legal developments in navigating the evolving landscape of AI and IP rights.
Considerations:
The judgment does not delve into the distinction between inventions assisted by AI and those solely generated by AI. It leaves unanswered questions about the role of humans in AI-assisted inventions and the criteria for inventorship. The UKSC decision diverges from certain interpretations under the European Patent Convention (EPC), raising questions about alignment with international patent standards.
Furthermore, the rise of AI-related disputes underscores the need for clarity in intellectual property laws. Cases involving copyright and trademark infringement highlight the evolving nature of AI's interaction with legal frameworks.
The Thaler v Comptroller case marks a significant milestone in the intersection of AI and patent law. While clarifying the current limitations, it also signals the need for forward-looking strategies to navigate the complexities of AI-driven innovation in the legal realm. As technology progresses, the quest for a harmonious relationship between AI advancements and intellectual property rights remains ongoing.
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