Inventions made by AI not capable of being patented

At the very end of December 2023, the UK Supreme Court handed down judgment in Thaler (Appellant) v Comptroller-General of Patents, Designs and Trademarks (Respondent). This was the end to a long-standing disagreement between Thaler, a technologist, and the Intellectual Property Office (IPO) who had previously rejected his endeavours to have patents listed under the Patents Act 1977 (the Act). 

While the appeal was dismissed on the basis that the IPO controller was “right to find that the applications were withdrawn at the expiry of the 16 month period specified in rule 10(3) of the Patent Rules 2007 (Rules), and in relation to the definition of ‘inventor’ under the act, the case did not consider perhaps the more interesting part of the broader policy issue as to whether technical advances generated or created by AI should be able to be patentable.

The matter arose when in 2018 Dr Thaler filed applications for the grant of patents for “new and useful devices and methods” but the paperwork indicated that he was not the inventor. After queuing why he could not be listed as the inventor Thaler responded that the inventor in each case was a machine that he had developed, called DABUS. He claimed that by being the owner of the machine he acquired the right to apply for the grant of patents, but that the inventions had been created “autonomously and by artificial intelligence (“AI”) by DABUS. 

In 2019, the first hearing took place and the hearing officer for the Controller decided that (one) DABUS could not be regarded as an inventor for the purpose of the Act, and (two) Thaler was not, as owner, entitled to apply for patents. Furthermore, the applications would be withdrawn at the expiry of the 16 month period specified in rule 10(3) of the Rules. Thaler then appealed to the High Court, where the matter was dismissed, and again dismissed by a majority in the Court of Appeal. The case then came before the Supreme Court. 

The Supreme Court rejected the appeal on all three grounds - that to register a patent the application must be made by a person, and that as DABUS was not a person, the machine was therefore not able to devise the inventions, therefore was not capable of being an inventor under the act, thus the Controller was right to consider that the application had been withdrawn.

But, unless the Comptroller-General appeals to the Court of Appeal, currently the use of AI as part of an invention can be patentable. In Emotional Perception AI Ltd v Comptroller- General of Patents Designs and TradeMarks [2023] EWHC 2948 (Ch), handed down only a month earlier in November 2023, it was the use of an Artificial Neural Network (ANN) that was brought before the High Court. 

The application for the patent was in relation to a system where pairs of music files were passed through an ANN, to “provide an improved system for providing media file recommendations to an end user”, for example for use by “music websites, where a user may be interested in receiving music similar to another track of which he/she knows or already has… the advantage of the proposed patent is said to be that it is able to offer suggestions of similar music in terms of human perception and emotion irrespective of the genre of music and the apparently similar tastes of other humans, and to arrive at such suggestions by passing music through a trained ANN which does the categorisation in that respect”.

The application had been rejected by the patents office on the basis that the “Patents Act 1977 section 1(2)(c) excludes from patent protection "a program for a computer … as such", but the High Court held that “whilst the ANN ‘learnt’ how to determine whether music was semantically similar or dissimilar via training using a computer program, the presence of a computer program at the training stage was subsidiary to the claimed invention”. 

Essentially that as the ANN is not ‘a computer program, as such’ under 1(2)(c) of the Patents Act 1977, therefore the appeal was allowed. As a result of the hearing, the guidance on patent applications relating to AI inventions has been temporarily suspended.

Posted on 02/07/2024 by Ortolan

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