In September 2021 the Court of Appeal ruled that an AI machine could not be named as the inventor on a patent application. This decision, in the case Thaler v Comptroller General, came down to the wording in the Patents Act 1977, specifically that ‘a person’ must be identified as the inventor. This is crucial as the right to own a patent, and therefore its benefits, flows from the named inventor.
The decision came at almost the same time as the Secretary of State for Digital, Culture, Media and Sport presented the ‘National AI Strategy’ to parliament, billed as ‘our ten-year plan to make Britain a global AI superpower.’ The Judges in Thaler highlighted, however, that the case must be decided based on current law, not the law as it might be in future or ought to be. The Patents Act, as written in 1977, did not contemplate AI or its ability to contribute to making inventions; the Judges could not take these unforeseen technological development into consideration.
In October the Intellectual Property Office published an open consultation on ‘Artificial Intelligence and Intellectual Property: copyright and patents’. The consultation considered AI’s role in innovation and creativity. It recognised the disparity between the law as introduced in the 70s and the advancements of technology today. It invited feedback on patent protection for AI-devised inventions, asking whether we should extend protection to them, and if so, how?
The consultation stated benefits of AI being named as an inventor on a patent application include: “patents could be justified if they were to incentivise the generation of new AI-devised inventions. This could indirectly encourage the creation of new AI systems, without unreasonably restricting competition and innovation by third parties.” However, counter views were also raised, expressing concern that “a proliferation of patents covering AI-devised inventions could have a detrimental effect on innovation and competition” and create “a problem for small and medium enterprises and start-ups struggling to grow in this environment”. For example, where advances in AI reduce innovation costs, this may result in large volumes of patents held by a small number of dominant players – those with access to the best AI technology and training data.
Internationally – if the UK makes legal changes to allow AI to own patents it may cause issues with those who want to register patents in multiple countries. An applicant may struggle to name themselves as the sole inventor in a jurisdiction which requires a person to be the patent owner when they have registered a patent in another country naming a machine is the sole inventor. Most countries do not currently accept AI as an inventor and commentators therefore, perhaps ideologically, suggested that any changes must be made internationally rather than unilaterally.
The Thaler case was heard in multiple jurisdictions worldwide and the decisions were not universally opposed to the grant. Both the European Patent Office and United States took the same stance as the Court of Appeal: the patent was not allowed. The US court rejected the patent as and it was held that a machine is incapable of making an oath required of patent applicants under US law and was therefore incapable of holding a patent. In contrast, the Australian court and South African patent office both granted the patent.
In a climate of ever increasing international trade, the case highlights the need for worldwide consistency of reform in order to be able to regulate a world which is becoming increasingly reliant on emerging technology. The case and the related international decisions will be a key consideration for the Government when taking steps to implement the ‘National AI Strategy’ and assessing the responses to the AI consultation.
The Government is currently reviewing the responses to the consultation, the outcome of which will determine how well any proposed changes to UK law regarding patents will align with its 10 year plan to make Britain a global AI superpower. Innovators and technology businesses will certainly be watching the next developments with interest.
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