In Thaler v Comptroller-General of Patents, Designs and Trade Marks  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.
- DABUS is not an ‘inventor’ under the Patents Act 1977 (“Patents Act”)
- 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.’
- 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.
- Dr Thaler was not entitled to apply for and obtain a patent simply by virtue of his ownership of DABUS
- 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.
- By failing to satisfy the requirements of the Patents Act, the two patent applications must be taken to have been withdrawn
- 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.
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.
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.
Continue reading “UK AI Regulation Bill Proposes New AI Regulator”
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:
Continue reading “EU AI Act Agreed”
On 29 March 2023, the UK Government published its latest proposals on regulating Artificial Intelligence (“AI”). The White Paper follows on from an initial policy paper published in July 2022 (the “2022 Policy Paper”), which we discussed in detail in our previous blog post. The proposals set out in the White Paper have been informed by the feedback received as part of the UK Government’s consultation on the 2022 Policy Paper.
A central theme is that the regulatory framework in the UK must not stifle innovation, but rather harness AI’s ability to drive growth and prosperity, and increase public trust in its use and application.
Continue reading “The UK’s New AI Proposals”
The UK government recently introduced a new Data Protection and Digital Information (No. 2) Bill (the “New Bill”). The reforms are intended to update and simplify the UK’s data protection framework and reduce burdens on organisations, while maintaining high data protection standards.
The New Bill replaces the original Data Protection and Digital Information Bill introduced in July 2022 (the “Previous Bill”), which we discussed in detail in our previous blog post. Much of the original drafting remains the same in the New Bill. However, there are some key changes to the proposals, outlined below.
Continue reading “UK’s Updated Data Protection Reform Proposals”
In a recent judgment, the Court of Justice of the European Union (the CJEU) has confirmed that Data Protection Officers (DPOs) can maintain other tasks and duties within their role, provided they do not result in a conflict of interest. The CJEU also held that the GDPR allows for EU member states to legislate to give greater protection to DPOs against dismissal than those set out in the GDPR.
Background to Ruling
In October 2020, the Federal Labour Court of Germany, Bundesarbeitsgericht, requested a preliminary ruling from the CJEU relating to proceedings between X-FAB Dresden GmbH & Co. KG (X-FAB) and its former DPO (“FC”) to clarify under what circumstances an organisation may be allowed to lawfully dismiss its appointed DPO. FC had been DPO for X-FAB and several related companies within its group and had held the role of chair of the works council and vice-chair of the central works council for a few group companies, alongside the DPO position for those companies. FC had been dismissed by X-FAB in December 2017 at the request of the state officer for data protection and freedom of information of Thüringen, Germany. Subsequently, on the coming into force of the GDPR in May 2018, X-FAB had repeated this dismissal as a precautionary measure. FC sought a declaration by the German courts that he retain the DPO position. X-Fab argued FC’s dismissal was justified, stating “a risk of a conflict of interests” in performing both functions, i.e., as both DPO and chair/vice-chair of the works council, on the grounds of incompatibility between the roles. The courts at both first instance and appeal upheld FC’s claim.
Continue reading “CJEU Rules on Dismissal of DPOs and Conflict of Interest”