A judgment by the UK Court of Appeal finding that inventions created by an AI machine are not patentable has been appealed to the UK Supreme Court and is due to be heard on 02 March 2023.
Summary of the Appeal
The applicant previously appealed a decision of the UK Intellectual Property Office (the ‘UK IPO’) that deemed two UK patent applications should be withdrawn as they named an AI machine, DABUS, as the inventor, a decision which was upheld by the High Court.
The High Court decision was subsequently appealed to the Court of Appeal, with the central argument being that DABUS should be named as an inventor, and, as the owner of the AI machine, the applicant should be able to apply for a patent on behalf of DABUS. These arguments were rejected and the decision of the UK IPO was upheld. More information on the Court of Appeal decision can be found in our previous publication Court of Appeal divided on patent office treatment of AI applications (cms-lawnow.com).
An appeal has been filed in the Supreme Court with a hearing date of 02 March 2023. The Chartered Institute of Patent Attorneys (‘CIPA’) has intervened in support of the applicant during the permission to appeal stage.
The patents which are the subject of the appeal are GB1816909.4 and GB1818161.0 (concerning a food/beverage container and a light beacon respectively).
No substantive issues were found with the content of the subject patent applications during prosecution by the UK IPO.
The patent applications were filed in the name of the applicant, alongside statements of inventorship explaining that DABUS, the AI, was considered to be the inventor, and that the applicant derived the right to be granted the patents as he owned DABUS.
The UK IPO objected to the ability of DABUS to be named as an inventor as DABUS is not a person, and that, even if DABUS was the inventor, there is no valid chain of title from DABUS to the applicant. The High Court and subsequently the Court of Appeal upheld the decision made by the UK IPO.
The applicant has appealed the decision to uphold the objections of the UK IPO and has filed a case with the Supreme Court.
CIPA has intervened in support of the applicant during the permission to appeal stage, stating that they believe that the appeal raises a point of law of general public importance.
The arguments submitted are:
- The applicant is entitled to the grant of patents for inventions created by DABUS. More generally, the owner (and in this case the creator and user) of an AI system is entitled to inventions generated by the system and to the grant of patents for those inventions if patentable.
- The Patents Act 1977 (the ‘Act’) does not require an applicant to name a natural person as an inventor to meet the requirements of section 13(2) of the Act.
- The applicant has satisfied section 13(2) of the Act.
Section 13(2) of the Act relates to an applicant requiring the filing, with the patent office, of a statement wherein they identify the person(s) whom they believe is the inventor(s), and, where the applicant is not the inventor, indicating the derivation of their right to be granted the patent.
Some of the arguments presented in the case for appeal are summarised below:
The Act expressly provides a property right in an invention
The applicant first argues that there is a property right in an invention, where the property right in an invention is distinct from the property right in a patent or patent application. The applicant agrees with Birss LJ in the Court of Appeal decision, that there is property in an invention at the time of making the invention. It is submitted that the right to a patent is not the same as the right in an invention, and in fact, from the right in the invention one derives at least the right to the grant of a patent.
Given that the Act provides property in an invention, and as DABUS is property of the applicant, the applicant submits that the principle of accession applies to the DABUS inventions. Additionally, the applicant was the first rightful possessor of the inventions, and first possession is widely recognised as a basis for ownership of unowned property. No other person is identified as being better able to claim the property rights in the invention.
The applicant submits that if there is no proprietor of an invention created by an AI system, the owner of the AI system, for example, would have no ability to prevent a patent being granted to a third person who illegitimately filed an application for that invention.
There is no prohibition to the grant of a patent for an AI-generated invention
Secondly, the applicant submits that the Act does not require an invention to have been created by a human inventor to be patentable. Even if the act assumes a human inventor, that is not a substantive requirement as set out in the sections of the Act covering patentability; section 13 is a procedural requirement only.
Additionally, the wording of the European Patent Convention (the ‘EPC’) does not distinguish a human inventor, and the EPO Board of Appeal case J0008/20 held that AI-generated inventions are patentable under Art. 52(1) EPC. The applicant submits that the UK is bound by the EPC and the substantive sections of the Act are framed to have, as nearly as possible, the same effects as the EPC.
Incorrect application of section 13 of the 1977 act
The applicant submits that section 13 only requires belief that a person is an inventor, and, even if an AI cannot be designated as an inventor, the Comptroller-General of Patents, Designs and Trade Marks at the UK IPO does not have any ability to investigate the designation. Additionally, the applicant submits that section 13 does not require proof of entitlement, and again, that the Comptroller does not have the ability to investigate the provided entitlement.
The EPO Solution
In the associated decision J0008/20 of the EPO Board of Appeal (discussed in our previous publication EPO refuses Patent Application with Machine Inventor (cms-lawnow.com)), also appealed on behalf of the applicant, it was submitted that the owner of an AI machine may simply name themselves as the inventor, and that the EPC does not provide any mechanism by which the EPO could challenge this designation.
However, the applicant submits that this is inconsistent with current UK law, as UK law requires the inventor to be the actual deviser of the invention.
CIPA, in their intervention during the permission to appeal stage, submitted that all the Act requires is that an applicant states their belief as to who the inventor is and how the applicant derives their rights, in alignment with the case being considered.
It was submitted that it remains open to a third party to contest the mention of an inventor with correction of the mention, and open to a third party who believes they have a right to grant of the patent to contest this matter. Additionally, CIPA submitted that the decision to refuse the appeal would introduce a new, non-statutory ground for refusing patent applications, and is in direct conflict with the drafting intent of the Act, alongside being contrary to the policy objective of providing a stimulus for innovation.
Generative AI technologies have recently become widely used as a result of the availability of generative AI tools on the internet. These types of technologies are likely to be used in a wide range of application domains (such as security, manufacturing, life sciences and others) in addition to generation of text, audio, video and other content. As a result society is having to adapt quickly.
The DABUS Supreme Court hearing is therefore particularly timely because it is an opportunity for the law to develop in this nascent field. The Supreme Court has a difficult task since it has to take into account how society can best deal with generative AI technologies when it interprets the law. It is noted that the patent system is a useful tool available to society to promote knowledge sharing and innovation and to establish and record the creators of technology.
The DABUS case highlights some possible weak points in current patent office procedure and law, such as around if and how entitlement to a patent application is examined by the patent office and the limited circumstances when it can be challenged.