Once an inventor, always an inventor well not if you run off AI

September 28, 2020, By

The High Court has heard an appeal from a UK Intellectual Property Office (UKIPO) decision in which Dr Stephen Thaler’s two patent applications were refused. The two applications were refused at first instance by the UKIPO as the inventor was not a natural person, it was “DABUS”, a type of “Creativity Machine”, The Honourable Mr Justice Marcus Smith has upheld the UKIPO’s decision.

Dr Thaler filed the two patent applications in October and November of 2018, the application forms provided that Dr Thaler was not the inventor. This is common in the patent world as, for example, often third parties such as employers will apply for patent protection for inventions that their employees have created.

The UKIPO asked Dr Thaler to provide a statement of inventorship and of right to grant a patent, this is a requirement under the law. Dr Thaler did proceed to file the statement but listed DABUS, a “a particular type of connectionist artificial intelligence”. The UKIPO found that DABUS was a machine and therefore as it was not a natural person it could not be regarded as an inventor. The current law, the Patents Act 1977, does not envisage that anyone or thing other than a natural person can be an inventor for the purposes of patent law.

In his decision, Hearing Office Huw Jones, explained that “As the applicant says, inventions created by AI machines are likely to become more prevalent in future and there is a legitimate question as to how or whether the patent system should handle such inventions. I have found that the present system does not cater for such inventions and it was never anticipated that it would, but times have changed and technology has moved on.”

The High Court has then this week upheld the decision of Mr Jones. Essentially, in doing so the High Court has determined that AI machines cannot be “inventors” for UK patent law. Although, the adventures of Dr Thaler and DABUS do not stop at the UKIPO or High Court.

Back in August 2019, the US Patent and Trademark Office asked Dr Thaler to file a document to identify the US patent application inventor. Again, this caused issues and a review of that request was issued by Dr Thaler. Cutting to the chase, the Deputy Commissioner for Patent Examination Policy refused this on the basis that US law does require an inventor for the purposes of US patent law to also be a human.

The Hon. Mr Justice Marcus Smith ordered that whilst he did refuse permission to appeal the decision “The questions raised by [Dr Thaler] are undoubtedly interesting: but they are interesting in terms of legal policy regarding artificial intelligence and raise no matter of interest on an appeal.”

AI + invention does not, therefore, equate to a grantable patent in UK law. Given the rise in AI and machine learning, I wouldn’t expect it to be long for this to be challenged.

Written by Sam O’Toole, Solicitor

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