As the use of artificial intelligence (AI) in developing new inventions and technologies becomes more prevalent, courts around the world are increasingly addressing whether new inventions developed by AI are eligible for patent protection. The UK Supreme Court recently addressed this question by holding that inventions developed solely by AI could not be granted patent protection.

Dr. Stephen Thaler submitted patent applications covering a thermal mug and “Neural Flame.” Both of these applications covered inventions that were prepared by an AI system developed by Dr. Thaler, who listed the AI system as the sole inventor. The UK Intellectual Property Office rejected his patent application, and Dr. Thaler challenged that rejection through the court system and all the way to the UK Supreme Court, where he argued that because the AI system conceived of the invention independently, it should be granted patent rights.

The UK Supreme Court disagreed with Dr. Thaler’s arguments. Instead, it strictly interpreted the wording of the Patents Act of 1977, which defines an inventor as “a natural person.” An AI system is, obviously, not a person. Moreover, the UK Supreme Court rejected any argument that Dr. Thaler could be listed as the inventor of the inventions simply because he owned or programmed the AI system that produced them, thus making sure that AI-generated inventions could not be granted patents because there were no legal inventors.

In the US context, the U.K.’s decision mirrors a recent decision by the top US patent court, the Court of Appeals for the Federal Circuit. The Federal Circuit also denied similar patent applications for Dr. Thaler’s AI-generated inventions. As with the UK Supreme Court, the Federal Circuit interpreted the U.S. Patent Act to require that an inventor of a patent be a human being. The UK and Federal Circuit decisions highlight a growing trend of rejecting patents for inventions developed solely by AI systems. As a result, clients should be aware that using an AI system to develop new inventions may cause significant issues in obtaining patent protection, up to and including a patent office refusing to grant a patent altogether.

The UK decision is titled Thaler v. Comptroller-General of Patents, Designs and Trade Marks, [2023] UKSC 2021-0201; the related Federal Circuit decision is titled Thaler v. Vidal, 43 F.4th 1207 (Fed. Cir. 2022).

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