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 2023

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

Civil society and industry representatives met in Geneva on Thursday, September 28 to discuss a potential expansion of the TRIPS waiver
Sources say the beta version of the USPTO’s new trademark search tool is a big improvement over the current system but that it isn’t perfect
Canadian counsel weigh in on the IP office’s decision to raise trademark filing fees in 2024 and how they’re preparing clients
We provide a rundown of Managing IP’s news and analysis coverage from the week, and review what’s been happening elsewhere in IP
Shira Perlmutter, US Register of Copyrights, discussed the Copyright Office's role in forming generative AI policy during a House of Representatives hearing
The award marks one of the highest-ever damages received by a foreign company in a trademark infringement suit in China
Two orders denying public access to documents have reignited a debate over a lack of transparency at the new court
Rouse’s new chief of operations and the firm’s CEO tell Managing IP why they think private equity backing will help it conquer Europe
Brian Landry, partner at Saul Ewing, reveals how applicants can prosecute patent applications in the wake of the Federal Circuit's In re Cellect ruling
Ronelle Geldenhuys of Australia’s Foundry IP considers the implications complex computer technologies such as AI have on decision-making