AI system cannot be named as inventor: UK Supreme Court
The UK Supreme Court has decided that an artificial intelligence (AI) system cannot be named as the inventor of an invention under patent law. The decision can be accessed here.
This marks the end of the UK chapter of a series of test cases brought by Dr Stephen Thaler and collaborators in the Artificial Inventor Project, which seeks intellectual property rights for AI-generated output in the absence of a traditional human inventor or author. Dr Thaler had attempted to patent two inventions which he said were autonomously generated by his AI system, DABUS (Device for the Autonomous Bootstrapping of Unified Sentience): a food container and an emergency light beacon. The UK patent office objected to his patent applications as he insisted on DABUS being named as the inventor; he appealed the matter all the way up to the Supreme Court, and was unsuccessful at each stage.
The crux of the Supreme Court’s decision is that since an ‘inventor’ under patent law must be a natural person, Dr Thaler’s patent applications were defective because they named DABUS as the inventor. It is important to note that the decision dealt with the focused question of how patent law, as it currently stands, is to be applied. It ‘is not concerned with the broader question [of] whether technical advances generated by machines acting autonomously and powered by AI should be patentable’, which raises policy issues, as emphasised by the Supreme Court.
A related question in the AI zeitgeist is who owns the fruit of AI labour. This decision might, at first glance, seem to suggest that no one is entitled to a patent over an invention (a concept for new product, process, or technical improvement to existing technology) autonomously generated by AI. After all, the Supreme Court rejected Dr Thaler’s attempt to rely on the doctrine of accession (the notion that ‘if I own the cow, I own the calf’), drawing a distinction between ‘a new item of tangible property produced by an existing item of tangible property’ and ‘concepts for new and non-obvious devices and methods, and descriptions of ways to put them to into practice, all of which, so Dr Thaler maintains, have been generated autonomously by DABUS’.
The above being said, this case was unusual because of Dr Thaler’s insistence that DABUS be recognised as inventor. The outcome may well have been different if Dr Thaler had instead named himself as the inventor. Indeed, Lord Justice Birss remarked (at the Court of Appeal stage) that ‘There is more than a hint in this case of the idea that if only Dr Thaler was not such an obsessive and, instead of calling DABUS the inventor, he named himself and then none of these problems would arise’. The Supreme Court observed that ‘it is not and has never been Dr Thaler’s case that he was the inventor and used DABUS as a highly sophisticated tool. Had he done so, the outcome of these proceedings might well have been different’.
AI has also been used to generate other types of output, apart from inventions. The prevalence of AI chatbots powered by large language models (LLMs) has seen them involved in the generation of myriad content, ranging from haikus (‘give me a haiku about yourself, Bing’), to travel itineraries (‘plan me a 14-day hike in the Pennine Way’), to graphic works (see example below generated by Microsoft Copilot’s Image Creator using the prompt ‘four dachshunds of the apocalypse’). Copyright, which protects original expressions of ideas, might subsist in such AI-generated works, though this is subject to debate. If originality requires the expression of intellect, then the question is whether AI is truly intelligent, or merely simulates intelligence.
Assuming copyright subsists in these works, the law provides some clues about who owns it. The author and default owner of a literary, dramatic, musical, or artistic work which is ‘computer-generated’ (meaning that it was generated by a computer in circumstances such that there is no human author) is deemed to be ‘the person by whom the arrangements necessary for the creation of the work are undertaken’. Who exactly this person is, is a tricky question. Current case law seems to suggest that the answer is the developer of the AI software, but other possibilities include the person who provides the input or prompt to the AI software and the owner of the machine upon which the AI software runs. Interestingly, the terms of use for Microsoft Copilot, which generated the above ‘four dachshunds of the apocalypse’ image, state that ‘Microsoft does not claim ownership of Prompts, Creations, or any other content you provide, post, input, or submit to, or receive from, Copilot (including feedback and suggestions)’.
The questions surrounding AI output are of ever-growing importance, given the rapid advances in AI technology. It remains to be seen what changes to the law await us in time to come. Intellectual property law—with its traditional function of providing an incentive for human creativity, ingenuity, and endeavour (balanced against the public benefit of access to what is created)—may well undergo a sea change. Watch this space.
How we can help
Irwin Mitchell's team of experienced trade mark lawyers can help you register, protect and exploit your intellectual property. We can help with trade marks registered in the UK, the European Union or worldwide. Further information visit our website here.
