Man versus Machine: UK Supreme Court Upholds Requirement for Human Inventorship to Secure Patent Protection

I.   Background

For centuries, the patent system has been known to reward novel and useful inventions with exclusive rights to exploit such inventions over a specified duration. In exchange, inventors must provide sufficient disclosure of the information on their inventions to the public to enable others to learn from them and continuously expand upon the state of the art. Rapid technological advancements in the field of Artificial Intelligence ("AI") have demonstrated that this process of iterative innovation may no longer be the sole domain of humans. AI systems are increasingly capable of autonomous inventions, consequently subjecting the question of inventorship in patent law to debate.

The United Kingdom Supreme Court ("UKSC") has held in Thaler v Comptroller-General of Patents, Designs and Trade Marks [2023] UKSC 49 that artificial intelligence machines cannot be an inventor under the Patents Act 1977 ("UK Patents Act") and owners of such machines are not entitled to apply for a patent for any technical advances made by the machines if the machines are said to be the inventor. This decision forms part of a largely unsuccessful global test-litigation strategy by Dr Stephan Thaler ("Dr Thaler") to test the limits of artificial intelligence inventorship for patent applications in various jurisdictions, including major patent jurisdictions such as the European Union, the United States and Australia.

II.  Facts

The Appellant, Dr Thaler, filed two patent applications ("Applications") at the United Kingdom Intellectual Property Office ("UKIPO") naming an AI-powered machine known as DABUS[1] as the sole inventor instead of a human inventor. The UKIPO subsequently requested Dr Thaler to file a statement of inventorship and to indicate the derivation of his right to the grant of the patents in accordance with section 13(2) of the UK Patents Act. In Dr Thaler's view, DABUS was the inventor and he was entitled to the grant of the patents because he was the owner of DABUS.

The Applications were rejected and deemed withdrawn. The UKIPO held that since DABUS was not a human inventor, it could not be named as an inventor for the purposes of section 13 of the UK Patents Act.

On further appeal to the United Kingdom Court of Appeal, Dr Thaler argued that:

1. he was entitled to apply for and secure the grant of patents for inventions created by DABUS and, more generally, that the owner of a machine which embodies an AI system is entitled to inventions created or generated by the machine, and to apply for and secure the grant of patents for those inventions if they meet the other statutory requirements for patentability set out in the UK Patents Act;

2. an applicant for such a patent is not required to name a natural person as an inventor to meet the requirements of the UK Patents Act;

3. he had satisfied the provisions of section 13(2) of the UK Patents Act; and

4. in any event, the Hearing Officer for the Comptroller-General of Patents ("Comptroller") had no proper basis under the UK Patents Act for refusing the Applications.

III.  Decision of the UKSC

Dr Thaler's arguments turned on three main issues which the UKSC considered but eventually dismissed.

Meaning of "Inventor" under the UK Patents Act

On the first issue, the UKSC held that an "inventor" within the meaning of the UK Patents Act must refer to a natural person. Specifically, section 7(3) of the UK Patents Act provides that an "inventor" means the "actual deviser of the invention". In this regard, the UKSC clarified that the only interpretation of this word must follow its ordinary meaning in that the deviser is the person who devises a new and non-obvious product or process that is capable of industrial application. While the UKSC accepted Dr Thaler's assertions that DABUS did in fact create and generate the "inventions" described in the Applications, this did not mean that DABUS qualified as an inventor under the UK Patents Act. As Dr Thaler had applied for the patent on the basis that the invention was autonomously created by DABUS, the Applications failed because DABUS was not a natural person.

Notwithstanding the above, the UKSC noted that it was never Dr Thaler's case that "he was the inventor and used DABUS as a highly sophisticated tool". Had Dr Thaler done so, the UKSC took the view that "the outcome of these proceedings might well have been different" but did not elaborate further on this point.

Ownership of an intangible invention

The second issue concerned whether, despite there being no identified inventor, Dr Thaler could still apply for and obtain a patent with respect to any technical advances made by DABUS by virtue of his ownership of the machine. Given that DABUS was not an inventor, Dr Thaler failed to meet the requirements of section 7 of the UK Patents Act, which provides an "exhaustive code for determining who is entitled to the grant of a patent". In this regard, the UKSC held that "[s]ection 7 does not confer on any person a right to obtain a patent for any new product or process created or generated autonomously by a machine, such as DABUS, let alone a person who claims that right purely on the basis of ownership of the machine" and that the UK Parliament did not intend section 7 to confer such rights when enacting the UK Patents Act.

Dr Thaler also attempted to rely on the doctrine of accession where he asserted that the DABUS "inventions" were the "fruits of the DABUS machine that he owns" and that such a situation is analogous to one where a farmer owns the calf produced by the cow. The UKSC rejected this argument for two reasons. First, this argument was premised on the incorrect assumption that DABUS would be considered an "inventor" within the meaning of the UK Patents Act. Second, the doctrine of ascension only applies to "new tangible property produced by existing tangible property".

The UKSC also reiterated that an applicant for a patent need not be the inventor but must fall into one of the following categories: (a) a person who was, in preference to the inventor, entitled to the whole of the property in it in the UK; or (b) a person who is a successor in title to either the inventor or the person who is entitled to the whole property. Since Dr Thaler did not fall into either of these categories, he was not entitled to apply for a patent for any technical advances made by DABUS as the "inventor".

Withdrawal of the Applications by the UKIPO

On the third issue, the UKSC considered whether the Hearing Officer for the Comptroller was entitled to hold that the Applications would be taken to be withdrawn for a failure to satisfy section 13 of the UK Patents Act. As Dr Thaler had failed to fulfil both grounds prescribed in section 13 of the UK Patents Act (i.e., failing to name an inventor and failing to state the derivation of his right to apply for the patent), the UKSC held that the Hearing Officer for the Comptroller was indeed entitled to hold that the Applications would be taken to be withdrawn.

IV.  Holding

In light of the rejection of all of Dr Thaler's arguments, the UKSC, endorsing the majority in the UK Court of Appeal, unanimously dismissed Dr Thaler's appeal to name DABUS as the "inventor" under the UK Patents Act. Dr Thaler, as DABUS' owner was also not entitled to apply for a patent for any technical advances made by DABUS as the "inventor".

V.  Comments

The UKSC's decision in this case is a position that has been taken in decisions in other jurisdictions including Australia[2], the United States[3] and the European Union[4]. However, these decisions are generally premised upon whether a patent application has met the formal requirements of existing patent legislation. A broader question still remains on whether and how the patent system can accommodate technical advances made by AI systems acting autonomously, in particular whether such technical advances should be patentable.

It is noteworthy that the Intellectual Property Office of Singapore ("IPOS") had received a DABUS application[5] in October 2022 where Dr Thaler's inventorship statement[6] read "DABUS, The Invention was autonomously generated by an artificial intelligence". However, according to IPOS, this application has been treated as abandoned.[7]

Inventor as a Natural Person

While there have been no judicial pronouncements in Singapore (as at the date of this writing) on whether technical advances made by AI systems acting autonomously are patentable, guidance can be sought from provisions in the Singapore Patents Act 1994 ("Singapore Patents Act") and case law on whether an "inventor" must refer to a natural person. Section 2(1) of the Singapore Patents Act defines an "inventor" as "the actual deviser of the invention". This phrase has been interpreted by the Singapore courts in Energetics Pte Ltd v Musse Singapore Pte Ltd ("Energetics") to mean "the natural person who came up with the inventive concept" and excludes those who merely "contributed to the claim".[8] In this regard, the court in Energetics noted that "inventorship is a personal right which is unique to the inventor, and which cannot be assigned the way proprietary (and other) interests can" and that that the inventor has a "moral right" to be named even if he is not the proprietor of the patent.[9] As such, Energetics makes clear that only natural persons can be regarded as inventors under the Singapore Patents Act.

Section 24(2) of the Singapore Patents Act requires a patent applicant to file a statement identifying the person or persons whom the applicant believes to be the inventor or inventors, and where the applicant is not the sole inventor or the applicants are not the joint inventors, to indicate the derivation of the applicant's or the applicant's right to be granted the patent, failing which, the application is treated as having been abandoned. Based on the reference to "a person"/"persons", it appears that section 24(2) of the Singapore Patents Act would also require an applicant to identify a natural person in the inventorship statement. Similar references to "a person"/"persons" are also used in section 19 of the Singapore Patents Act which sets out who a patent may be granted to. Notably, sections 19 and 24 of the Singapore Patents Act share similar language with sections 7 and 13 of the UK Patents Act. In view of the similarities between the UK Patents and the Singapore Patents Act, the UKSC's decision while not binding on the Singapore courts, may be of persuasive value.

Technical Advances made by AI Systems Acting Autonomously

Notwithstanding that an "inventor" should be a natural person under Singapore law, it remains to be seen how the patent system in Singapore can accommodate technical advances made by AI systems acting autonomously. Section 13(1) of the Singapore Patents Act outlines the key conditions that a patentable invention must satisfy. In particular, the invention must be new, involve an inventive step and must be capable of industrial application. Furthermore, pursuant to section 25 of the Singapore Patents Act, the specification of a patent application must disclose the invention in a manner which is clear and complete for the invention to be performed by a person skilled in the art.

The issue of whether technical advances made by AI systems acting autonomously can be patented will have implications on the patentability criteria in the Singapore Patent Act. For instance, the patentability criterion requiring the invention to involve an "inventive step" requires that the invention would not have been obviously decided by a person skilled in the art. There is an implicit assumption that this person skilled in the art is a human researcher with practical knowledge in the field of technology relevant to the invention in question.[10] In light of this, it is unclear how a person skilled in the art is to assess if an AI-generated invention is obvious. Perhaps, this assessment could be undertaken by a machine instead, but the attributes of such a machine would have need to be determined.[11]

VI.  Conclusion

The UKSC decision involving DABUS is unlikely to be the last word on the issue of AI inventorship. As the development of AI continues at a rapid pace with AI systems becoming increasingly capable of generating autonomous inventions, IP offices and policymakers worldwide have recognised the pressing need to address questions surrounding inventorship, and more broadly, whether legislative changes to patent law would be necessary to accommodate AI-generated autonomous inventions. Where legislative changes are proposed, it remains to be seen whether such changes would be cohesive and consistent across jurisdictions as international harmonisation would facilitate cross-border innovation and provide for a more predictable legal and business environment.

AUTHOR INFORMATION:

Pramesh Prabakaran is an Associate in the Intellectual Property, Technology & Data Group at WongPartnership LLP.
Email: pramesh.prabakaran@wongpartnership.com

REFERENCES

[1]       DABUS stands for "Device for the Autonomous Bootstrapping of Unified Sentience".

[2]       See Full Court of the Federal Court of Australia's decision in Commissioner of Patents v Thaler [2022] FCAFC 62. The High Court of Australia in Thaler v Commissioner of Patents [2022] HCA Trans 199 subsequently refused an application by Dr Thaler for special leave to appeal the decision of the Full Court of the Federal Court.

[3]       See United States Federal Circuit Court of Appeals decision in Thaler v Vidal 43 F.4th 1207 [2022]. Permission to appeal the decision of the Federal Circuit Court of Appeals was denied by the United States Supreme Court in Thaler v Vidal (No. 22-919).

[4]       See European Patent Office Board of Appeal decision in J 0008 / 20 issued on 21 December 2021.

[5]       This application is the national phase entry of an international application under the Patents Cooperation Treaty, where the applicant had designated 18 jurisdictions, including Singapore.

[6]       Pursuant to Section 87(1)(c) of the Singapore Patents Act 1994, this statement is deemed to be the statement of the name of the inventor provided at the international phase under the Patents Cooperation Treaty application.

[7]       When Code Creates: A Landscape Report on Issues at the Intersection of Artificial Intelligence and Intellectual Property Law (28 February 2024), accessed on 23 April 2024.

[8]       [2013] SGHCR 21 at [24(a)] citing Yeda Research and Development Co Ltd v Rhone-Poulenc Rorer International holdings Inc [2007] Bus LR 1796' [2008] RPC 1 at [20].

[9]       Energetics at [24(b)].

[10]     Wee Loon Ng-Loy, "Chapter 16: Intellectual Property" in Simon Chesterman, Goh Yihan and Andrew Phang Boon Leong, Law and Technology in Singapore ("LTS") (Singapore Academy of Law 2021) at [16.023].

[11]     There have been suggestions that when considering AI in inventing, the concept of the "person skilled in the art" or "person having ordinary skill in the art" ("PHOSITA") should be reformulated as "machine of ordinary skill in the art" ("MOSITA") (see Daniele Febris, "From the PHOSITA to the MOSITA: Will 'Secondary Considerations' Save Pharmaceutical Patents from Artificial Intelligence?" (2020) 51 International Review of Intellectual Property and Competition Law 685 as cited in footnote 57 of LTS).