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¡AI Curumba! – AI Cannot be an Inventor

Nov 19, 2021

Author: Phil Leonard

AI is the buzzword across a whole host of industries, the media and the government (which recently published its National AI Strategy).

It is venerated and vilified in equal measure, and very often misunderstood.

What is clear is that an AI cannot be an inventor for the purposes of UK patent law.

An inventor can only be a “natural person” (i.e. a human being). This has been confirmed in a recent Court of Appeal decision. The case concerns two patent applications filed with the UKIPO which identified an AI machine called DABUS as the inventor.

Quite simply, and aside from any philosophical musings as to what it is to be a human being, the application was rejected by the UKIPO because the application did not identify a “natural person” as the inventor of the patent, which is a requirement under s. 13 of the Patents Act 1977 (“PA 1977”). The Court of Appeal ultimately upheld that decision.

The UKIPO position is also consistent with a recent EU Patent Office decision which rejected a patent application in which DABUS was named as the inventor.

Non-human inventors were never envisaged by the patent regime. As such, the law in this area has limited scope to deal appropriately with the development of AI.

However, the government could introduce legislation to adapt the current patent regime along the lines of copyright law.

The Copyright Designs and Patents Act 1988 (“CDPA”) provides copyright protection to computer-generated works where there is “no human author”. Under s.9(3) CDPA, the author of a computer-generated work is the person or corporate entity that makes “the arrangements necessary” for the creation of the work.

Would it not make sense for the inventor of an AI-generated invention to be the person or corporate entity that makes “the arrangements necessary” for the creation of the invention? This approach would provide a route for AI-generated inventions to be accommodated by the patent regime, whilst leaving sufficient scope for case law to develop this concept further.