Landmark UK AI inventorship appeal set

Potter Clarkson, a prominent UK intellectual property law firm, has taken on a significant role in a groundbreaking appeal regarding the inventorship of artificial intelligence. The firm has been appointed by the US-based Brown Neri Smith & Khan LLP to represent Dr Stephen Thaler in his appeal against the UK Intellectual Property Office’s (UKIPO) decision to deny patent applications for two inventions produced by Dr Thaler’s AI system, DABUS. This appeal is particularly noteworthy as it follows the UK Supreme Court’s December 2023 ruling, which explicitly stated that current UK law does not allow an AI system to be named as an inventor.

The appeal is slated for July 2025 and revolves around the patents linked to those contested at the Supreme Court. This latest legal challenge scrutinises the UKIPO’s refusal to recognise Dr Thaler as the inventor in light of the Supreme Court's clarification. The implications of this case are substantial, especially as the technology landscape continues to evolve. Over the years, the role of AI in innovation and creativity has surged, impacting various sectors from boardrooms to laboratories. This shift raises essential questions about the adaptability of intellectual property law, which is still grounded in the 1977 Patent Act.

Dr Thaler's case is part of a broader initiative known as the Artificial Inventor Project, led by Professor Ryan Abbott, who is a Professor of Law and Health Sciences at the University of Surrey. Professor Abbott also serves as counsel of record for Dr Thaler’s cases in both the US and the UK. The project aims to evaluate how different jurisdictions manage the legal implications of inventions generated by AI.

Mark Nichols (pictured), Head of AI at Potter Clarkson, expressed his commitment to the case, stating “I had been closely following Dr Thaler’s previous line of cases culminating in the Supreme Court decision, and this important economic and philosophical debate about the value of AI creativity and inventiveness, so had no hesitation in accepting Professor Abbott’s proposal to be involved in the UK appeals. DABUS is an extremely interesting project and our team at Potter Clarkson is excited to be working on it.”

Professor Ryan Abbott further highlighted the objectives of the Artificial Inventor Project by saying “When we commenced our Artificial Inventor Project, we had three goals in mind: 

1) to generate guidance for stakeholders; 

2) to promote a public discourse on how the law should deal with the use of AI in invention; and 

3) to promote the view that AI-generated inventions are beneficial to protect. We have already achieved some of these goals. The new appeal led by Potter Clarkson will add to the Artificial Inventor Project by looking at the more procedural points of AI patent applications.”

As this landmark appeal approaches, it promises to be a pivotal moment in the discourse surrounding the intersection of AI technology and intellectual property law in the UK