AI Creations and Patents Law | Intellectual Property
The advancement of AI technology continues to produce challenges to the interpretation of existing laws.
Whist most new technology will enjoy some form of Intellectual Property Right (‘IPR’) it seems that products actually created by technology itself do not satisfy the requirements of the Patents Act 1977 thereby enabling such a product to be registered as a patent.
This determination was decided by the Supreme Court in Thaler v Comptroller-General of Patents, Designs and Trade Marks.
Stuart Southall of KANGS Solicitors now comments on the current law and this decision.
The Relevant Law | The Patents Act 1977
The Patents Act 1977 (‘the Act’) states that in order to secure a Patent, the following must be satisfied:
‘1 Patentable inventions.
(1) A patent may be granted only for an invention in respect of which the following conditions are satisfied, that is to say—
(a) the invention is new;
(b) it involves an inventive step;
(c) it is capable of industrial application;
(d) the grant of a patent for it is not excluded by subsections (2) and (3)… below;
and references in this Act to a patentable invention shall be construed accordingly.
(2) It is hereby declared that the following (among other things) are not inventions for the purposes of this Act, that is to say, anything which consists of—
(a) a discovery, scientific theory or mathematical method;
(b) a literary, dramatic, musical or artistic work or any other aesthetic creation whatsoever;
(c) a scheme, rule or method for performing a mental act, playing a game or doing business, or a program for a computer;
(d) the presentation of information;
but the foregoing provision shall prevent anything from being treated as an invention for the purposes of this Act only to the extent that a patent or application for a patent relates to that thing as such.’
Importantly, the Act makes reference to the identification of the inventor or inventors as follows:
‘13 Mention of inventor.
(1) The inventor, or joint inventors of an invention shall have a right to be mentioned as such in any patent granted for the invention and shall also have a right to be so mentioned if possible in any published application for a patent for the invention and, if not so mentioned, a right to be so mentioned accordance with rules in a prescribed document.
(2) Unless he has already given the Patent Office the information hereinafter mentioned, an applicant for a patent shall within the prescribed period file with the Patent Office a statement
(a) identifying the person or persons whom he believes to be the inventor or inventors; and
(b) where the application is not the sole inventor or the applicants are not the joint inventors indicating the derivation of his or their right to be granted the patent,
and if he fails to do so, the application shall be taken as withdrawn.
The Case in Focus | Thaler v Comptroller-General of Patents, Designs and Trade Marks
Rejection of Patent Applications
Dr Stephen Thaler had filed two Patent Applications and in the process of doing so he confirmed that he was not the inventor, the patentable product was created by Artificial Intelligence and that he had standing to seek the patent because he was the owner of that AI machine.
The United Kingdom Intellectual Property Office (‘UKIPO’) advised Dr Thaler that it disagreed with his interpretation on standing and advised that the patent applications would be deemed as withdrawn as it did not consider that the AI machine could be deemed to be the inventor.
Appeal to the Supreme Court
The Supreme Court was not asked to consider whether or not technical products created by AI machines should be considered patentable, but the process and interpretation of the Patent Act 1977.
The Supreme Court was asked to consider:
- the scope and meaning of ‘inventor’ pursuant to the Act,
- whether, as owner of the AI machine, Dr Thaler had standing to make the Patent Application and
- whether the Patent Application should be considered withdrawn due to the failure to identify the inventor.
The Supreme Court determined that:
- an ‘inventor’ must be a ‘naturalised person’ i.e. it cannot be a machine,
- merely being the owner of the machine that creates the ‘patentable’ product does not provide standing to enable a Patent Application to be submitted and
- accordingly, it was appropriate for the UKIPO to consider the patent applications to have been withdrawn due to non-compliance by Dr Thaler.
How Can We Assist
More likely than not, the law, whether it be Statutory or Case Law, is never going to be ‘ahead of the game’ when it comes to providing for the constantly increasing legal problems created by technological development.
This will, of course, result in demanding challenges being presented to the courts.
The Team at KANGS, as a matter of course, constantly monitors the changing legal frontier and is available to advise clients in relation to patents and all areas of intellectual property disputes.
Who Can I Contact for Advice & Help?
We welcome enquiries by:
Telephone: 0330 370 4333
Email: info@kangssolicitors.co.uk
We provide a no obligation, initial consultation at our three offices in Manchester, Birmingham and London. Alternatively, meetings can be held via video conferencing.
