High Court confirms that the class of inventions created by AI machines is not patentable 

The High Court has confirmed that the class of inventions created by AI machines is not patentable. The decision potentially leaves the door open for human owners of AI machines to list themselves as inventors. Smith J explicitly states that his ruling should not discourage applicants from applying for a patent application that resulted from running an AI machine while listing the owner of the AI machine as an inventor. However, Smith J does not go as far as explicitly stating such an application would be allowable.

The applicant appealed a decision of the UK Intellectual Property Office (IPO) arguing that the UK IPO had been biased and misdirected when applying the law. The applicant argued that listing an AI machine as inventor should not prevent the patents being granted. The judge dismissed all grounds of appeal and upheld the original UK IPO decision.

The facts of the decision

The decision concerns two UK patent applications (GB1816909.4 and GB1818161.0) filed in the name of a human applicant.

The applicant filed statements of inventorship for both applications. The statements of inventorship explained that the inventor is an AI machine called DABUS and that the applicant derived the right to grant of the patents by “ownership of the creativity machine DABUS”.

The UKIPO wrote to the applicant saying that the naming of a machine as inventor does not meet the requirements and that a person must be identified. The UKIPO asked the applicant to provide a statement indicating how he derived the right to grant of the patent from the inventor and explained that failure to provide the necessary information within the prescribed period would result in the applications being taken to be withdrawn.

The applicant maintained that the statement of inventorship fully met the requirements and requested a hearing. In the hearing the UK IPO found that DABUS was not a person and so cannot be considered an inventor of a patent and that even if DABUS is an inventor there was no valid chain of title from DABUS to the human applicant, even though the human applicant is the owner of DABUS.

The applicant appealed the decision of the UK IPO to the High Court and the appeal was heard by Justice Marcus Smith.

The full High Court decision is available at

https://www.bailii.org/ew/cases/EWHC/Patents/2020/2412.html

Legal arguments

The applicant appealed the UK Intellectual Property Office’s (UK IPO’s) decision on several grounds that Smith J grouped into three main categories, namely:

1. The applicant had not received an impartial hearing;
2. That the UK IPO had misdirected themselves in their approach to construing the relevant legislation; and
3. The patents act had been used as an illegitimate means of denying the applicant a patent.

In relation to point (1), the applicant argued that he was denied a fair hearing by the UK IPO since the IPO’s Formalities Manual indicted that “where the state inventor is an ‘AI Inventor’, the Formalities Examiner [should] request a replacement The consequence of failing to supply this is that the application is taken to be withdrawn…”. The applicant had raised this issue at the original hearing before the UK IPO and was assured this would not impact the result of the decision. While Smith J agreed that the applicant was correct to draw the UK IPO’s attention to the Formalities Manual, he considered it a misconceived ground of appeal since there is no basis for suggesting that this paragraph had impacted the original decision. Thus, Smith J dismissed this ground of appeal.

In relation to point (2), the applicant also appealed the decision on the grounds that UK IPO had “incorrectly focussed” on the inventor’s motivation to innovate and disclose. The applicant referenced sections of the decision which described a disagreement between the applicant and UK IPO over whether an AI machine is capable of being encouraged to disseminate an invention and whether the only way to achieve this is to enable the owner of the machine to acquire the right to the patent. Furthermore, the relevant sections described how the applicant argued that it is a legitimate question how and whether the patent system handles inventions of this nature. In their response the UK IPO said it is right such issues should be debated but any changes to the law should be considered from such a debate and “not shoehorned into existing legislation”.

The courts dismissed this appeal on the grounds that the UK IPO was merely testing the conclusions they had made and therefore the UK IPO’s focus in these paragraphs was not incorrect.

In relation to point (3), Section 13 of the Patents Act 1977 requires an applicant to identify “the person or persons he believes to be the inventor or inventors” or the application shall be taken to be withdrawn. The applicant argued that since he believed DABUS to be the inventor he had met this requirement and the UK IPO’s ruling otherwise “contradicts the generally held principle that inventorship should not be a substantial condition for the grant of patents”.

Smith J disagreed with this stating that Section 7 of the Patents Act defined who was entitled to grant of an application and this was tied to inventorship. Thus, Smith J concluded meeting the requirements of Section 13 alone was not enough and the requirements of Section 7 must also be met.

Smith J then went on to consider whether the applicant was entitled to a patent under Section 7 of the patents act.

Section 7 states:

(1) Any person may make an application for a patent either alone or jointly with another.

(2) A patent for an invention may be granted—

(a) primarily to the inventor or joint inventors;

(b) in preference to the foregoing, to any person or persons who, by virtue of any enactment or rule of law, or any foreign law or treaty or international convention, or by virtue of an enforceable term of any agreement entered into with the inventor before the making of the invention, was or were at the time of the making of the invention entitled to the whole of the property in it (other than equitable interests) in the United Kingdom;

(c) in any event, to the successor or successors in title of any person or persons mentioned in paragraph (a) or (b) above or any person so mentioned and the successor or successors in title of another person so mentioned; and to no other person.

(3) In this Act “inventor” in relation to an invention means the actual deviser of the invention and “joint inventor” shall be construed accordingly.

(4)Except so far as the contrary is established, a person who makes an application for a patent shall be taken to be the person who is entitled under subsection (2) above to be granted a patent and two or more persons who make such an application jointly shall be taken to be the persons so entitled.

Smith J noted that it was mutually agreed that DABUS was not a person. Therefore, Smith J did not consider whether DABUS could be considered to be a person. Smith J also ruled that since it was agreed DABUS was not a person, it was clear DABUS could not make a patent application. However, since the applicant was a person and not DABUS, it was also clear that requirement (1) of Section 7 was met.

Smith J then considered if the requirements of Section 7(2) were met by considering whether the applicant or DABUS fell into any of classes (a)-(c) mentioned in Section 7(2).

Since the applicant explicitly state he was not the inventor, the applicant was not considered to fall into class (a) himself.

Smith J rejected the idea that the term “inventor” in the Patents Act could be expanded to include things as well as people. He argued that if the term “inventor” was expanded to include things then there would be a category of inventions that had no person falling within class (a) above thus there would be a class of inventions that would be unpatentable “not because the invention is not patentable one, but because of the nature of the inventor”. Thus, Smith J argued for the “definition of the “inventor” as the person who is the actual deviser of the invention”. Hence, Smith J concluded DABUS could not be an inventor within the meaning of the Patents Act simply because DABUS was not a person. Thus, Smith J concluded that DABUS was not an inventor in accordance with class (a).

In relation to classes (b) and (c), Smith J ruled that even if DABUS was considered an inventor the fact that it was a thing not a person meant it would be incapable of conveying any property to the applicant. Smith J also ruled the applicant’s ownership of DABUS did not entitle to him to any resultant patents since a patent has to be applied for by someone falling into Section 7(2)(a), (b) or (c) discussed above.

Smith J did not rule on whether the owner/controller of an artificially intelligent machine is the “actual deviser of the invention” since this point was not raised by the applicant on moral grounds. However, Smith J mentioned he did not consider this an improper argument and stated, “it would be wrong to regard this judgement as discouraging an applicant from at least the contention”.

Ethical arguments

Smith J noted that it would be far easier to contend that the applicant was entitled to the grant of a patent on the grounds that the applicant owned the machine that did the inventing. However, the applicant expressly declined to advance the question of whether the owner of an AI machine that invents something can be named as the “inventor”, on the grounds that he would be illegitimately taking credit for an invention that was not his.

The applicant stated that in some instances of machine invention, a natural person may qualify as the inventor by virtue of having exhibited inventive skill (e.g. developing a programme to solve a particular problem). However, DABUS was not created to solve any particular problem. Furthermore, the machine was not trained on any special data relevant to the invention and the machine itself identified the novelty of the invention. Therefore, the applicant concluded he could not make any moral claim to the title of “inventor” for the present invention.

Comments

As with the original UK IPO decision, this decision focuses solely on the status of an AI machine as an inventor and its subsequent ability to transfer rights.

Once again, there was no challenge to the applicant’s assertion that the AI machine, DABUS, was the inventor. However, Smith J explains that this issue was not considered because it was not raised by the applicant himself on moral grounds. Smith J explicitly states that his ruling should not discourage applicants from applying for a patent application that resulted from running an AI machine while listing the owner of the AI machine as an inventor. However, Smith J does not go as far as explicitly stating such an application would be allowable.

Smith J contends that allowing an AI machine to be considered an inventor would result in a class of inventions that were unpatentable because of the nature of their inventor. However, the current ruling does not provide a solution to this since the two applications were ultimately deemed withdrawn on the grounds of who the applicant considered the inventor. Having the owner of an AI machine be considered an inventor would overcome this. However, this still leaves the issue of what happens when the applicant believes the inventor to be someone/thing different from who the law considers the inventor. If an AI machine is largely autonomous, it could also lead to questions as to whether the owner or devisor of an AI machine should be considered the inventor.

There was also no consideration as to whether there are any circumstances in which an AI machine should be considered to be a person. Given the current level of AI machines this is not surprising, but this may become an issue as AI machines are further advanced.

It is also interesting that, as discussed above, the applicant advocated on moral grounds that an AI machine should be considered an inventor rather than a tool used by an inventor. The applicant also advocated that the owner of the AI machine should then be considered the applicant. However, this itself could be considered morally uncomfortable since if an AI machine is considered to have the ability to fully invent rather than be a tool that aids developing inventive concepts, can it morally be considered to have an owner?