UK Supreme Court Rules that AI cannot be an ‘Inventor’ Under UK Patent Law

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In Thaler v Comptroller-General of Patents, Designs and Trade Marks [2023] UKSC 49, the UK Supreme Court ruled that AI cannot be an ‘inventor’ for the purposes of UK patent law. The ruling concludes a series of appeals from Dr Stephen Thaler and his collaborators, who argued that an AI system called ‘DABUS’ should be named as the inventor of two new inventions generated autonomously by it relating to food and beverage packaging and light beacons. This was part of a series of test cases, which have had limited success globally, seeking to establish that AI systems can make inventions and that the owners of such systems can apply for and secure the grant of patents for those inventions. The judgment noted that the broader questions of whether an invention generated autonomously by AI ought to be patentable, or whether the meaning of the term ‘inventor’ should be expanded to include machines powered by AI, were matters of policy that would need to be addressed by legislation.

The UK Supreme Court made three main findings.

  1. DABUS is not an ‘inventor’ under the Patents Act 1977 (“Patents Act”)
  2. An ‘inventor’ within the meaning of the Patents Act must be a natural person (a human being). Since DABUS is a machine, not a natural person, it cannot be an ‘inventor.’
  3. It was not Dr Thaler’s case that he was the inventor and had simply used DABUS as a highly sophisticated tool. Had Dr Thaler made that case and named himself as the inventor, the Court noted that its decision might have been different, but it was not the Court’s place to determine that question.
  1. Dr Thaler was not entitled to apply for and obtain a patent simply by virtue of his ownership of DABUS
  2. Dr Thaler sought to rely on the doctrine of accession whereby the owner of existing property would own new property generated by that existing property (in the same way that a farmer owns the cow and also the calf). The Court held that this only applies to tangible property and not to intangible inventions. For this reason, title to the invention cannot pass as a matter of law from the machine that generated it to the owner of that machine. This argument also assumes that DABUS itself can be an inventor within the meaning of the Patents Act, which, as the court had already established, it cannot.
  1. By failing to satisfy the requirements of the Patents Act, the two patent applications must be taken to have been withdrawn
  2. Because Dr Thaler had failed to name an inventor and had failed to state a valid right to apply for and obtain the patents, the UK Intellectual Property Office had been correct to find that Dr Thaler’s two patent applications would be taken to be withdrawn at the expiry of the 16-month period prescribed by UK patent law for this purpose.

Commentary

Dr Thaler’s UK patent applications were part of a project involving parallel applications to patent offices around the world. The UK Supreme Court’s ruling is unsurprising and follows similar decisions in the United States and Europe.

The ruling raises significant issues for the AI industry, but it is important to focus on what it confirms: that inventors must be natural persons for the purposes of UK patent law. The judgment does not impact the patentability of AI-generated inventions as it does not necessarily preclude a person from securing a patent, provided that a human being is named the inventor.

UK AI Regulation Bill Proposes New AI Regulator

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While the focus of attention in the world of AI has been the EU AI Act: EU AI Act Agreed – Discerning Data in recent weeks, there have also been some other noteworthy legislative developments. On 22 November 2023, the Artificial Intelligence (Regulation) Bill (the “Bill”) was introduced to the UK Parliament and passed the first reading in the House of Lords. The Bill seeks to establish a central AI authority (“AI Authority”) to oversee the UK’s regulatory approach to AI. The proposal for an AI Authority comes after the UK Government formally announced a UK AI Safety Institute at the global AI Safety Summit at Bletchley Park (summarised here).

Whilst the Bill largely reflects the approach of the UK Government, this is a Private Members’ Bill (“PMB”). PMBs are legislative proposals introduced into one of the UK Houses of Parliament by ‘backbench’ members (members who are not Government Ministers). Most PMBs fail to pass unless the UK Government steps in to support their progress through the legislative process.

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EU AI Act Agreed

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Late on Friday (December 8th), the European Union Commission, Parliament and Council concluded its “trilogue” negotiations for the EU Artificial Intelligence Act. The summary below is based on the information available to date. It will be some time before the definitive text is finalized and released since it will have to go through various committee stages and its legal language finalized in multiple languages.

Prohibited AI Applications

The following applications of AI will be prohibited:

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Cybersecurity Enforcement Update: NYDFS Adopts Final Amendments to its Cybersecurity Regulations and SEC Sues SolarWinds Executive

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Recent activity by the New York Department of Financial Services (NYDFS) and the Securities and Exchange Commission (SEC) highlight the continued focus by government regulators on cybersecurity. As these and other regulators take an increasingly assertive enforcement posture, companies should be proactive about structuring their cybersecurity compliance programs to avoid fines, safeguard sensitive data, and protect their reputation.

NYDFS Finalizes Amendments to Cybersecurity Rules

In July, we wrote about ten notable updates proposed by NYDFS to its cybersecurity regulations. On November 1, the NYDFS announced that it had finalized amendments to 23 NYCRR 500.

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The UK’s Online Safety Bill – Implications for US and International Businesses

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On 19 September 2023, the UK Parliament passed the Online Safety Bill (“OSB”). The OSB aims to protect individuals from illegal online content and focuses on the protection of children by requiring the removal of content that is legal but harmful to children. For example, social media platforms will be required to act rapidly to prevent children from viewing illegal material, or content that is harmful to them, such as pornography, online bullying, and the promotion of suicide, self-harm or eating disorders. The definition of illegal content covers content that is already unlawful under existing legislation, such as terrorism, hate speech and child sexual exploitation, and introduces new offences relating to more recent online phenomena such as revenge pornography, and ‘upskirting’ and ‘downblousing’ images. This is one of the most significant pieces of UK legislation post-Brexit and shows a distinctly UK approach to online harms, which businesses operating globally will need to comply with. This will need to be reviewed in parallel with the EU Digital Services Act, which has similar goals in making Europe a safe online environment.

A date for Royal Assent (when the OSB will become law) is expected shortly. The OSB’s wide scope makes it likely to result in implementation problems and potential challenges resulting from the impact the OSB is likely to have on freedom of expression and personal privacy. The underlying principles of the OSB are very different to those familiar with US laws and the constitutional protections for free speech. The risks of non-compliance will be significant, with extremely high potential fines of up to 10% of a company’s global revenue.

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SEC Adopts New Cybersecurity Rule

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On July 26, the Securities and Exchange Commission (“SEC”) finalized a much anticipated rule addressing cybersecurity risk management, strategy, governance, and incident disclosure. Public companies registered with the SEC will soon be required to report material cybersecurity incidents within four business days of determining the incident to be material and to make periodic disclosures regarding cybersecurity risk management, strategy, and governance.

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