UK Supreme Court wrestles with inventorship at DABUS showdown
Managing IP is part of the Delinian Group, Delinian Limited, 4 Bouverie Street, London, EC4Y 8AX, Registered in England & Wales, Company number 00954730
Copyright © Delinian Limited and its affiliated companies 2024

Accessibility | Terms of Use | Privacy Policy | Modern Slavery Statement

UK Supreme Court wrestles with inventorship at DABUS showdown

London- The Supreme Court on Parliament Square, Westminster. The

Oral arguments in the DABUS appeal centred on whether the wording of UK patent law has room for an AI inventor, as Managing IP reports live from court

UK patent law already allows for artificial intelligence tools to be named as inventors, counsel for computer scientist Stephen Thaler told the Supreme Court today, March 2.

A panel of five judges heard arguments in the final stage of a legal battle over whether two patent filings naming the AI tool DABUS as the inventor should be granted.

The appeal was brought by Thaler, the creator of DABUS, an AI system that he claims autonomously invented a food storage system.

The UKIPO rejected the patent filings on the grounds that UK patent law requires a human, or “natural person”, to be named as the inventor.

But counsel for Thaler told the Supreme Court that the law simply required the applicant to identify whom they believed the real inventor to be.

Ryan Abbott, a professor at the University of Surrey who has been representing Thaler throughout the case, and Robert Jehan, partner at Williams Powell, acted as counsel for Thaler.

In this case, the counsel said, Thaler’s statement that there was no human inventor met the UK Patents Act’s requirements.

Lord Justice David Kitchin, a former IP barrister, repeatedly quizzed the pair over why Thaler didn’t name himself as the inventor when this would probably have meant the patent could have been granted.

“You have taken what could be seen as a rather intransigent position in how you’ve framed your application and run into a brick wall,” the judge suggested.

But it would be dishonest for Thaler to name himself as the inventor when he was not the actual deviser of the technology, as required by UK law, Abbott replied.

“What might be intransigent to some might, to others, simply be Thaler stating his scientific belief [that there is no inventor],” he said.

Stuart Baran, barrister at Three New Square and standing counsel for the UKIPO, said too many of Thaler’s arguments dealt with what he thought the law should be rather than what the statute required.

“Parliament centred its provisions on [natural] persons with consideration and care,” he said.

Toby Bond, partner at Bird & Bird in London, was one of several lawyers who attended as observers.

Speaking to Managing IP outside court, he said the arguments touched on fundamental points about the purpose of the patents system.

“From their questions, the justices clearly understand the significance of the decision they have to take,” he said.

The trial concluded today and a decision is now pending.

more from across site and ros bottom lb

More from across our site

Allen & Gledhill partner Jia Yi Toh shares her experience of representing the winning team in the first-ever case filed under Singapore’s new fast-track IP dispute resolution system
In-house lawyers reveal how they balance cost, quality, and other criteria to get the most from their relationships with external counsel
Dario Pietrantonio of Robic discusses growth opportunities for the firm and shares insights from his journey to managing director
We provide a rundown of Managing IP’s news and analysis from the week, and review what’s been happening elsewhere in IP
Law firms that pay close attention to their client relationships are more likely to win repeat work, according to a survey of nearly 29,000 in-house counsel
The EMEA research period is open until May 31
Practitioners analyse a survey on how law firms prove value to their clients and reflect on why the concept can be hard to pin down
The winner of Managing IP’s Life Achievement Award discusses 50 years in IP law and how even he can’t avoid imposter syndrome
Saya Choudhary of Singh & Singh explains how her team navigated nine years of litigation to secure record damages of $29 million and the lessons learned along the way
The full list of finalists has been revealed and the winners will be presented on June 20 at the Metropolitan Club in New York
Gift this article