UK High Court Confirms AI Cannot be an Inventor

25 September 2020

In a decision published earlier this week, the high court has confirmed a decision by the UKIPO that a machine learning system or algorithm cannot be regarded as the inventor of a patent under the UK Patents Act 1977 as such a system is not a "natural person". The court further confirmed the UKIPO decision that such a system cannot transfer such rights to a human as it is not entitled to own them to begin with. This decision is not surprising and follows the approach taken by the EPO and USPTO and the opinions of other patent offices.

The applicant in this case maintained that a machine learning system was the inventor of the patent applications in question. The applications relate to a food container with a fractal wall profile and a pulsed light source having a particular frequency and fractal dimension. The applicant maintained that he had had no personal input to the discovery of the underlying inventions, which were claimed to be entirely the work of the system running a number of neural networks, going by the name of “DABUS” and thus refused to name himself as the inventor of the applications. The UKIPO therefore deemed the applications withdrawn through failure to identify the inventor.

In the appeal, the applicant accepted that DABUS was not a natural or legal person. The applicant’s arguments on appeal were based on the contention that despite this, section 7 of the UK patents act (which deals with inventorship of an application) does not require that an inventor is a person. Section 7 specifies that a patent may be granted to the inventor of an invention, and further clarifies that the term "inventor" refers to the "actual deviser of the invention". However, the section does not define the requirements of being an inventor any further.

The court did not accept these arguments. Following a review of wording elsewhere in the act as well as relevant case law, the court concluded that it was a requirement that the inventor as described in section 7 was a person. As it was not disputed that DABUS was not a person, DABUS could not be considered the inventor. For similar reasoning, DABUS could not transfer the right to the invention to the applicant as it was not possible for DABUS to have ownership of the invention in the first place. The appeal was therefore dismissed and, barring further appeal, the refusal of these applications confirmed.

However, the court stated that this decision did not reflect on whether the owner of an AI system could be considered the "actual deviser of the invention" and therefore the inventor with ownership of a corresponding patent application. This is not unexpected, and the applicant’s choice not to take this approach is likely due to the applicant’s desire to raise publicity around this issue. These cases also may be partially responsible for the UKIPO’s decision to run a consultation regarding the UK’s present legal framework for IP in relation to AI and machine learning to determine if the law should be updated in this area.

For further information or should you have any queries, please contact John Leeming or your usual J A Kemp contact.

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