Non-Human Inventorship in the UK and Overseas

In light of recent proliferation of Generative AI content and the increasing roll out of AI in research and development, it is timely to remind ourselves of the established rules on AI and inventorship under UK patent law. These principles were set out in the Supreme Court decision handed down in Thaler v Comptroller General, marking an end of the dispute in its current form and providing unequivocal confirmation that English patent law does not recognise non-human inventorship.

Thaler v Comptroller General Overview

Dr Stephen Thaler was backed by the 'Artificial Inventor Project' to test the scope and meaning of 'inventor' under patent law and to lobby for the recognition of AI inventorship. In doing so, Dr Thaler filed two UK patent applications in late 2018 for inventions he claimed were autonomously generated by his AI system named DABUS. DABUS is a GenAI 'creativity machine' formed from neural networks trained on a broad range of general information. The system operates with two neural networks: the first generating ideas, and the second evaluating those ideas for novelty against its training data, with the aim of autonomously producing patentable inventions. The Courts at all levels accepted, for the purposes of the proceedings, that DABUS was the factual origin of the inventive concepts and that no human intervention was involved.¹

In accordance with section 13 of the Patents Act 1977, Dr Thaler filed statements of inventorship for each application identifying DABUS as the person or persons which he believed to be the inventor. Failure to identify a prescribed person results in the application being treated as withdrawn.²  This naming requirement under section 13 is significant on the basis it works in conjunction with section 7, which provides an exhaustive code for entitlement to a patent i.e. patents may only be granted to: (a) the inventor or inventors, (b) any person or persons who, by virtue of any enactment, rule of law or agreement with the inventor, was or were entitled to the invention at the time it was made, or (c) the successor in title from a person described by (a) or (b).

Dr Thaler's statement of inventorship asserted that DABUS was the sole inventor of the inventions, that there was no human that may be attributed inventorship and that he derived title by virtue of his ownership of DABUS. However, the UKIPO deemed the applications withdrawn on the basis section 13 requires the identification of a 'natural person' and DABUS failed this requirement. The UKIPO held that DABUS, as a machine, could not be an inventor within the meaning of the Patents Act, that no rights could pass from DABUS to Dr Thaler to entitle him to the grant of a patent, and in any case, that DABUS lacked the legal capacity to transfer any rights.³

Appealing the Decisions

Dr Thaler appealed the UKIPO's decision to the High Court.⁴  However, Justice Marcus Smith dismissed the appeal, holding that the statutory scheme of the Patents Act requires the inventor to be a natural person, and that the UKIPO was justified in treating the applications as withdrawn for failure to identify a valid inventor. The High Court also rejected the argument that section 13 of the Patents Act could be satisfied by a purely subjective statement of belief if that belief was not legally tenable.

On further appeal to the Court of Appeal, Dr Thaler argued that while the Patents Act was premised on inventors being natural persons, this was not a strict requirement.⁵  He additionally argued that he derived entitlement to be granted a patent via the doctrine of accession and that section 13 required only an honest statement of belief, which he provided. The Court of Appeal dismissed the appeal (Arnold and Laing LJJ, majority), again holding that the legislative scheme required an inventor to be a natural person, and rejecting Dr Thaler's claims of entitlement derived via the doctrine of accession and subjective belief. Birss LJ, dissenting, agreed that DABUS could not be an inventor, but would have allowed the applications to proceed on the basis Dr Thaler had complied with his obligations under section 13 by providing an honest statement of belief.

Dr Thaler appealed to the Supreme Court, which distilled the matter down to three core issues: (a) whether DABUS could be an inventor under the Patents Act 1977, (b) whether Dr Thaler had a right to apply for the inventions generated by DABUS, and (c) whether it was correct for the UKIPO to deem the applications as withdrawn. The appeal was dismissed unanimously by the Supreme Court (Lords Hodge, Hamblen, Leggatt, Richard and Kitchin).

In its reasoning, the Supreme Court emphasised that its task was to interpret the law as it stands, not as it might be or as policy might suggest it should be.⁶  The Court made clear that any change to allow AI to be recognised as an inventor would require legislative intervention, not via an exercise of judicial interpretation.⁷

Meaning of 'inventor' in English Patent Law

The Court held that the term 'inventor' in patent law has a singular meaning. It means the 'actual deviser' of the invention, which, in its ordinary sense and in the context of the Patents Act 1977, means a natural person.⁸ This is supported by the structure of section 7(2), which provides the exhaustive list of three categories of person who is capable of holding property, who may be granted a patent and which unequivocally concludes with 'and to no other person'.⁹

Even if DABUS were considered the inventor, the Supreme Court held that Dr Thaler was not entitled to apply for or obtain patents for the inventions. The right to apply for a patent is an assignable property right, but this right only arises where there is a person who is the inventor or who derives the right (directly or indirectly) from the inventor.¹⁰  Dr Thaler’s argument that he acquired rights to the inventions by analogy with the doctrine of accession was rejected for two reasons: first, DABUS was not an inventor within the meaning of the Act, so there was no inventor from which rights could be derived; and second, there is no principle of law by which title to an invention could pass from a machine to its owner. The doctrine of accession applies only to tangible property, and the Supreme Court found no precedent or principle for its application to intangible property such as inventions generated by AI.¹¹

Finally, the Supreme Court found that the UKIPO was justified in treating the applications as withdrawn. Dr Thaler failed to name an inventor, and thus failed to comply with his obligations under section 13. The Comptroller was therefore entitled to deem the applications as withdrawn.¹²

Thaler v Comptroller General confirms that, under the current UK statutory scheme, only a natural person can be an inventor for the purposes of patent law, and that inventions generated autonomously by AI are not presently capable of being the subject of a valid UK patent application unless a natural person can be identified as the inventor. It is therefore essential to understand how to identify when a natural person does or doesn’t qualify as an inventor when leveraging AI in innovation.

AI Inventorship Overseas

The question of whether AI can be recognised as an inventor under patent law has been subject of legal and policy discussions in a number of jurisdictions also outside of the UK. The issue has been brought into sharp focus by Dr Thaler’s attempts to secure patent protection for inventions generated by DABUS in multiple countries. However, even prior to Dr Thaler's campaign, the issue was being considered by a number of leading patent offices. In particular, the IP5, being the five largest patent offices in the world, comprising the USA, South Korea, Japan, China and the EU, issued a report in 2018 confirming that all member jurisdictions require an inventor to be a natural person.

Notably, Dr Thaler's campaign has extended to jurisdictions that may be treated persuasively in the UK including the USA, EU, Australia and New Zealand. However, they have all notably arrived at a similar place.¹³

United States of America

The USPTO rejected Dr Thaler’s applications naming DABUS as inventor, on the basis that only natural persons can be inventors under US patent law. Thaler challenged this decision, and the case ultimately reached the USA Court of Appeals for the Federal Circuit.¹⁴ The Federal Circuit held that the Patent Act unambiguously requires inventors to be natural persons, relying on the statutory definitions of 'inventor' as 'the individual, or if a joint invention, the individuals collectively who invented or discovered the subject matter of the invention'.¹⁵  The Court interpreted 'individual' in line with the Supreme Court precedent to mean a human being, not a machine or legal entity, and emphasised that the language of the US Patent Act consistently refers to inventors in terms applicable only to natural persons.

European Union

The European Patent Office (EPO) Boards of Appeal (BoA) held that the European Patent Convention (EPC) requires the designation of an inventor who must be a natural person with legal capacity.¹⁶  The BoA's reasoning was grounded in the ordinary meaning of 'inventor' and the language of the EPC and its implementing regulations, which collectively make clear that only a human can be named as inventor. The BoA rejected arguments that the EPC could be interpreted to permit the designation of an AI system as inventor, emphasising that the purpose of inventor designation is to confer and protect the rights of the inventor and provide a legal basis for entitlement, which cannot be fulfilled by a machine. The EPO also clarified its position by distinguishing between inventions made by humans using AI as a tool (whether to verify outcomes or to solve problems identified by humans), and inventions generated entirely by AI without human intervention which the EPO dismissed as not a current reality.

Australia

The Full Federal Court considered whether an AI system could be an 'inventor' under Australian patent law.¹⁷  The Court undertook a detailed analysis of the statutory framework, legislative history, and policy objectives, concluding that although the Act does not define 'inventor', its ordinary meaning, the structure of the Act, and entitlement provisions all require that an inventor must be a natural person with legal personality. The Court traced the concept of inventorship back to the Statute of Monopolies and through successive Australian patent legislation, finding a consistent approach that inventors are natural persons. It rejected arguments that ownership of an AI system or its output could satisfy the statutory requirements for assignment or derivation of title, as these mechanisms require a legal relationship with a person, not a machine. The Court held unequivocally that only a natural person can be an inventor under Australian law, so a patent application that does not identify a human inventor does not comply with statutory requirements.

New Zealand

The New Zealand High Court also considered whether DABUS could be named as an inventor under New Zealand patent law.¹⁸  Dr Thaler argued that the New Zealand patent law definition of 'inventor' was 'person independent' and could therefore include AI, unlike the legislation in the UK and Australia. The Court, however, examined the legislative history and found no indication that the New Zealand parliament intended to allow non-human inventors; rather, the removal of references to 'person' was actually to prevent importers from being named as inventors. The Court noted the close alignment of New Zealand’s statutory language and legislative context with that of Australia and the UK and concluded that, although the New Zealand Patents Act does not expressly require the inventor to be a person, the natural reading of the relevant provisions is that only a human can be an inventor.