In 2018, Dr. Thaler filed two patent applications for inventions conceived by DABUS, an artificial intelligence (AI) creativity machine. As the owner of DABUS, Dr. Thaler claimed to own the inventions it devised. As such, the applications specified Dr. Thaler as the owner and DABUS as the inventor.
The Comptroller of the UK Intellectual Property Office (UKIPO) rejected both applications on the basis that AI machines, as non-natural persons, could not be inventors within the meaning of the Patents Act 1977 ("PA 1977") and as a result, ownership of the inventions could not be transferred to Dr. Thaler.
On appeal this week, Marcus Smith J upheld the decision of the UKIPO. He conceded that were the invention to have been devised by Dr. Thaler himself as a natural person, the applications would not have been rejected. Nevertheless, he claimed that the underlying reasoning behind the PA 1977 was not applicable to AI machines; its provisions apply to legal persons capable of ownership.
S.7 PA 1977 provides the classes of persons to whom patents can be granted. Dr. Thaler’s application relied on the class in S.7(a) PA 1977, which specifies inventors or joint inventors. Marcus J Smith did not interpret the class in S.7(a) PA 1977 as extending to non-legal persons. He concluded that the UKIPO was entitled to withdraw Dr. Thaler’s applications under S.13 PA 1977 since no class specified in S.7 PA 1977 was applicable.
Marcus J Smith held that it was not for the court to re-write the PA 1977. The ball is now in Parliament’s court. Recognition of AI machines as natural persons gives rise to deep ethical questions surrounding legal personhood and the role of the patent system in our society. With the number of AI-devised inventions growing exponentially, Parliament cannot bury its head in the sand.
The UKIPO’s recent consultation, despite ruling out legal personhood for machines at this time, recognises that reform to the intellectual property framework in England and Wales to accommodate AI is long overdue. Perhaps Dr. Thaler may find comfort in knowing that on the horizon lie days when “machines trained in the art” will be akin to “persons skilled in the art”.
The UK hearing officer found that the definition of inventor in the Act was pivotal. They commented that there should be a debate on patent law being fit for purpose with the increasing likelihood of AI in the invention process.
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