Today, 20th December 2023, the UK Supreme Court has handed down its judgment in this case, dismissing Dr Thaler's appeal.
On the Issue of Patentability
The UK Supreme Court has held that:
"…DABUS, a machine with no legal personality, is not and has never been an inventor within the meaning of the 1977 Act. This is more than a formal objection.It goes to the heart of the system for granting a monopoly for an invention." [para. 75]
"Section 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. This fundamental premise of the 1977 Act is made explicit in section 7(2)(b) on which Dr Thaler relies, as the references to "the invention" are necessarily references to an invention devised by a person." [para. 79]
The UK Supreme Court agreed with the finding of Elisabeth Laing LJ at para 103 of the judgment of the Court of Appeal ([2021] EWCA Civ 1374) that if "patents are to be granted in respect of inventions made by machines, the 1977 Act will have to be amended".
This position contrasts with that of the Legal Board of Appeal of the European Patent Office in J08/20, which we discuss in the attached discussion paper.
On The Issue of Entitlement
The UK Supreme Court held that Dr Thaler is not entitled to any patents on the DABUS inventions:
"There was no inventor through whom Dr Thaler could claim the right to obtain a patent for any technical advance described in those applications." [para. 84]
"For these reasons and those given by the Court of Appeal, I am satisfied that the doctrine upon which Dr Thaler relies here, that of accession, does not, as a matter of law, operate to confer on him the property in or the right to obtain a patent for any technical development made by DABUS.
It follows that, on the factual assumptions upon which this appeal is proceeding, Dr Thaler has never had any right to secure the grant to himself of patents under the 1977 Act in respect of anything described in the applications." [para.s 89 & 90]
There is reason to believe on the basis of these passages that according to the Supreme Court the Patents Act 1977 does not provide any right to entitlement to an AI generated invention to a person, irrespective of how the patent application is framed.
The Broader Issues and Changes to UK Patent Law
The UK Supreme Court made it clear that Dr Thaler's appeal does not concern broader questions of AI generated inventions.
"…this appeal is not concerned with the broader question whether technical advances generated by machines acting autonomously and powered by AI should be patentable. Nor is it concerned with the question whether the meaning of the term "inventor" ought to be expanded, so far as necessary, to include machines powered by AI which generate new and non-obvious products and processes which may be thought to offer benefits over products and processes which are already known." [para. 48]
"These questions raise policy issues about the purpose of a patent system, the need to incentivise technical innovation and the provision of an appropriate monopoly in return for the making available to the public of new and non-obvious technical advances, and an explanation of how to put them into practice across the range of the monopoly sought. It may be thought that the rapid advances in AI technology in recent times render these questions even more important than they were when these applications were made." [para. 49]
The judgment also expressly quoted from Elisabeth Laing LJ at para 103 of the judgment of the Court of Appeal ([2021] EWCA Civ 1374):
"If patents are to be granted in respect of inventions made by machines, the 1977 Act will have to be amended."
There therefore seems to be an acknowledgment that the issue of inventions generated autonomously by AI machines is becoming ever more relevant and that this should be addressed by changes in patent law. Given the shortcomings in UK patent law found by the UK Supreme Court, in our view this is a matter that needs to be addressed with urgency.
Conclusion
The DABUS inventions should not be considered revolutionary in the field of AI but as being the first patent applications filed at the UK Intellectual Property Office (and elsewhere) in which it has been admitted that the inventions were created by an AI system.
Nobody should be under any doubt that AI systems are currently, and will become ever more, able to conceive of new and non-obvious innovations that meet the fundamental requirements of patentability in accordance with the law.
The UK Supreme Court judgment makes it clear that current patent law in the United Kingdom is unable to protect these inventions.
The UK government has time and again set itself the goal of making "the UK a global centre for the development, commercialisation and adoption of responsible AI", in the hope of "securing the UK's position among the global AI superpowers" [Introduction to its Open Consultation of October 2019]. However, the state of UK patent law as held by the UK Supreme Court in this judgment puts the UK at a substantial disadvantage in relation to supporting our industries that develop and use AI in the generation of new technologies.
The position in the UK currently, therefore, is that the lack of patent protection for AI generated inventions, aside from potentially pushing pro-patent industries to look to set up elsewhere outside the UK, can be expected to act at best as a disincentive to disclose inventions created by AI systems.The patent system exists specifically to avoid this.
The judgment of the UK Supreme Court shows how poorly current UK patent law supports the aim of making the UK a global centre for AI and data-driven innovation.
At the time of writing, Saudi Arabia and South Africa have accepted to prosecute applications which acknowledge DABUS as the creator of the inventions and in which no natural person is named as inventor.