Patent application – can my AI machine be the inventor?

Dr Thaler, made a patent application for a UK patent and named an AI machine as the inventor. 

The background to the UK Supreme Court decision of Thaler v Comptroller-General of Patents, Designs and Trade Marks of December 2023 was that the appellant, Dr Thaler, owned an artificial neural system called DABUS (which is an acronym for “device for the autonomous bootstrapping of unified sentience”). The appellant had created the machine and had set it up to produce the inventions that were the subject of 2 patent applications. The first patent application was for an invention called “food container” and concerned the shape of parts for packaging for food. The second patent application was for an invention called “Devices and Methods for Attracting Enhanced attention” which was a form of flashing light. The court acknowledged that on the face of it, each application disclosed a potentially patentable invention. However, the request for grant form stated that Dr Thaler was not the inventor of the inventions. The original patent application form, in the section for the family name of the inventor gave the name “DABUS” which was the name of Dr Thaler’s AI machine. In response to the box requiring the appellant to indicate how he had the right to be granted a patent, he wrote “by ownership of the creativity machine DABUS”. 

The Hearing Officer for the Comptroller-General of Patents decided that the applications were deemed withdrawn because the statement of inventorship form did not satisfy the Patents Act 1977 which required the patent applicant to identify a person as the inventor and to indicate how applicant had derived his right to be granted the patent. 

The High Court upheld that decision. The Court of Appeal affirmed the High Court’s decision and held that an AI machine cannot qualify as an inventor under section 7 of the Patents Act. The decision was appealed again and the Supreme Court heard the appeal in Spring 2023.

The Supreme Court decision clarifies the UK’s position on AI inventors: 

  1. AI systems cannot be named as inventor; An “inventor” within the meaning of the Patents Act must be a natural person.
  2. the right to apply for an invention must originate from a human inventor. 
  3. the Comptroller was right to decide that the applications were deemed withdrawn

One of the key issues here and the reason that the appeals failed was that the appellant insisted that his machine – not Dr Thaler – was the inventor for the purposes of the patent applications. The proceedings might never have arisen if in his patent application he had mentioned himself as the inventor.

This UK approach is consistent with the approach taken by the European Patent Office.

This decision is not surprising and settles the question on ownership of AI inventions for now. 

The analysis of this decision does not suggest that an AI machine is not capable of an inventive concept, and whether the owner or controller of an inventive AI machine could be said to be the inventor is still an open question.