UK Supreme Court has final say on Dabus as named inventor

In one of the UK’s final patent judgments of 2023, the Supreme Court has confirmed that, under the Patents Act 1977, a patent application may not name an AI invention as an inventor (case ID: 2021/0201). In doing so, the judges adhere to the views of the lower courts, as well as the UK Intellectual Property Office (UK IPO), that an invention is only patentable if it names a ‘natural person’.

It has also declared that Dabus owner Stephen Thaler may not file applications and thus obtain patents for the inventions. Ultimately, the court has ruled that the Comptroller-General of Patents was entitled to withdraw the two patents at play. Despite the appellant’s best effort, there will be no shift in current UK IPO case law.

Third-round knockout

Prior to yesterday’s decision, Stephen Thaler, creator of AI machine Dabus, had already lost three rounds in the UK. The last blow came in September 2021, when the Court of Appeal upheld that an inventor can only be a ‘natural person’, and not a machine. Thaler’s argument is that Dabus itself should be named as the inventor and owner of EP 35 64 144 and EP 35 63 896, since it was the AI device which developed or ‘created’ the inventions behind the patents.

At the Court of Appeal, two out of three judges rejected Thaler’s appeal against the High Court’s original 2020 Dabus verdict. However, one voice of dissent came from Colin Birss, who opined that Thaler has “complied with his legal obligations” as regards naming an inventor on the application.

Although Birss agreed that an inventor must be a person, he noted that the Dabus case was essentially regarding “the correct way to process patent applications through the Patent Office.” As such, Birss considered that Thaler should receive a patent for essentially following the procedures and processes correctly.

Dabus can’t rely on formalities

However, while the Court of Appeal’s decision turned on the case’s legislative history, the Supreme Court instead examined how the case interpreted and applied the relevant provisions of the 1977 Patents Act. As such, it focused on the scope and meaning of the term “inventor”; whether Thaler was legally entitled to obtain a patent in respect of Dabus; and if the hearing officer for the Comptroller-General was entitled to hold that the patent applications should be withdrawn.

Overall, the Supreme Court concluded that an inventor must be a ‘natural person’, in-keeping with the Patent Act’s guidelines. According to UK legislation, a human must be behind the patent application, even if the applicant believes an AI system is entirely behind the invention. Furthermore, the judges found that Thaler was not entitled to obtain patents for the described inventions. This is because Dabus is not a person and therefore cannot transfer rights to the owner.

So far, the UK is the only country in which the Dabus case has reached the highest judicial instance. But the decision keeps the country’s approach in line with global verdicts, including the US Patent and Trademark Office (USPTO), and the Australia and New Zealand patent offices. South Africa remains the only country to have dissented from the prevailing view; in 2021, the South African Companies and Intellectual Property Commission (CIPC) granted Dabus a patent listing.

AI-human interface

In Europe, the most recent national decision came from Germany. In June, the 18th Senate at the German Federal Patent Court confirmed that the German Patent and Trademark Office (DPMA) cannot grant a patent on AI-generated inventions, unless the applicant falsifies statements regarding the inventor (case ID: 18 W (pat) 28/20).

But the decision is at odds with the result of a 2021 hearing, which concerned one of Thaler’s patents, DE 10 2019 128 1 202, for a fractal container. Here, the 11th Senate decided that the listed inventor must be a natural person, even if the AI has identified both the problem and the solution, while noting the application can name the AI system as an addition to the human inventor. This applies even if the application does not suggest the AI system is actually capable of creating the invention.

Future AI shifts

The EPO, too, has hinted at a changing approach. Last year the Boards of Appeal determined that AI cannot be named as the inventor behind a patent, rejecting Thaler’s contention that “the invention was conceived autonomously by Dabus” and that the appellant had derived the right to the European patent “by virtue of being the owner and creator of Dabus”. However, the decision did contain certain nuances which suggest future developments could make the EPO more open to granting patents for AI systems.

For example, the decision notes that “under Article 52(1) EPC any invention which is novel, industrially applicable and involves an inventive step is patentable.”

Regardless of the UK’s latest decision, there is a growing appetite for patent case law in Europe to adapt for growing numbers of AI-related applications. This is especially with regard to the notion of obviousness, as some observers note that an AI-generated invention can be non-obvious. There is also a call for better international consolidation, in order to produce more streamlined patent strategies, while the UK IPO is also considering its approach on inventions concerning AI. Thus, despite the outcome, Dabus has launched a multitude of discussions around inventor rights.

Final farewell

Dabus is the only patent case handed down by the Supreme Court in 2023. It is also one of the last to feature David Kitchin, who also wrote the judgment. In March 2023, Kitchin announced his retirement from the judiciary, with his replacement announced as Ingrid Ann Simler.

London-based IP firm Williams Powell, led by partner Robert Jehan, represented Stephen Thaler. University of Surrey academic Ryan Abbott provided support.

Junior barrister Stuart Baran has represented HM Comptroller-General against Stephen Thaler over Dabus since 2020 in his capacity as one of two Standing Counsel to HM Comptroller-General of Patents, Designs and Trade Marks. Otherwise known as a ‘treasury junior’, Baran takes on IP cases on behalf of the UKIPO and the UK, as well as being available for consultation by government departments on IP issues.

For Dabus
Williams Powell (London): Robert Jehan (patent attorney, lead), Ryan Abbott (professor, University of Surrey)

For the Comptroller General of Patents, Designs and Trademarks
Three New Square (London): Stuart Baran

UK Supreme Court, London
Patrick Hodge (deputy president), David Kitchin, Nicholas Hamblen, George Leggatt, David Richards,