Court Dismisses Fresh Attempt to Contest Patent on Thaler's Artificial Intelligence Innovation
The UK courts continue to grapple with the evolving intersection of patent laws and evolving technologies, as evidenced in the recent dismissal of an appeal by Dr. Thaler. The case, revolving around the AI system DABUS, has been a contentious issue in the realm of patent law.
Dr. Thaler, a computer scientist, had applied for two patents: "Food Container" and "Devices and Methods for Attracting Enhanced Attention". However, his initial application was rejected by the UK Intellectual Property Office (UKIPO) as it did not name a person as the inventor, but instead named the AI machine, DABUS.
The Hearing Office and the UKIPO also turned down Thaler's request to name himself as the inventor on the divisional application. Thaler argued that he should be entitled to shift his belief as to who the inventor was in the wake of the Supreme Court ruling, and name himself as the inventor instead.
Thaler contended that at the time the applications were filed, the case law was not settled, and it was unclear whether AI could be designated as the inventor. He also argued that the owner of an AI system should be the owner of patents for inventions derived from those systems.
In a landmark decision in December 2023, the UK Supreme Court ruled that only humans can be named as an inventor of a patent, not an AI system. This ruling set the stage for the subsequent series of appeals.
The High Court has now dismissed the divisional patent application of the parent patent applications previously before the Supreme Court. Thaler's appeal was also dismissed, reinforcing the Supreme Court's decision.
Judge Michael Tappin did not rule on whether AI-generated inventions need to be identified as such in the application. However, he focused on whether Thaler's statement of belief that he is the inventor of the inventions in the divisional application is "obviously defective" under the UK Patents Act.
Patent experts Sarah Taylor and Mark Marfé from Pinsent Masons have weighed in on the decision. Taylor suggested that it would be remarkable if Thaler did not appeal this decision due to the rapid evolution of AI and the potential need for revisiting patent laws in the future. Marfé stated that the judge's decision focused on Thaler's statement of belief, not on the broader issue of AI as an inventor.
The question of whether AI can be named as an inventor on patent applications remains unanswered, and it is clear that this issue will continue to be a topic of debate and discussion in the UK and internationally. As technologies continue to evolve, so too will the need to update patent laws to reflect these changes.
