Harber v HMRC [2023] UKFTT 1007 (TC) is one of the first reported cases which features material generated by Artificial Intelligence (AI). The appellant, a litigant in person, submitted AI generated case law in order to support her appeal. The tribunal investigated the validity of these ‘AI cases’ and did not appear to have much difficulty in concluding that these cases were not genuine, and that they had been generated by AI instead. Examples such as these are a case in point that AI generated material is here to stay and part of our personal and professional lives. Naturally, many questions arise around the legal, regulatory and ethical landscape of AI. One area in which litigation is starting to mushroom is intellectual property (IP) law and its relationship with AI. There currently is little legal authority in this sphere within the UK, but this is bound to change in the near future as courts and parliament will be faced with legal issues relating to AI and IP.

The question of whether AI can be an inventor under current patent law has already been considered by the Supreme Court in the case of Thaler v Comptroller- General of Patents, Designs and Trade Marks. In that case, Dr Thaler filed two patent applications under the Patents Act 1977 (the “1977 Act”) for inventions solely created by an AI system called DABUS of which Dr Thaler was the owner. The Hearing Officer for the Comptroller-General of Patents, Designs and Trade Marks (the “Comptroller”) issued a decision that (i) DABUS could not be an inventor for the purposes of section 7 and 13 of the 1977 Act because it was not a person, and (ii) Dr Thaler was not entitled to a patent based on his ownership of DABUS in circumstances where DABUS was listed as the inventor. Dr Thaler appealed to the High Court and the Court of Appeal but both appeals were unsuccessful with the appellate courts agreeing with the decision of the Comptroller.

The matter came before the Supreme Court. The court decided that: i) an inventor within the meaning of the 1977 Act must be a natural person, and ii) that the doctrine of accession does not apply as this is not a case where new tangible property is produced by an existing item of tangible property. It follows that DABUS is not an inventor for the purposes of 1977 Act and the Act did not confer on Dr Thaler the property in or the right to apply for and obtain a patent for any technical development made by DABUS. Accordingly, the Comptroller was right to find Dr Thaler’s applications as withdrawn under Section 13(2) of the Patents Act. The Supreme Court acknowledged that had it been Dr Thaler’s case that he was the inventor (rather than DABUS), and that he had used DABUS as a ‘highly sophisticated tool‘, the outcome of the proceedings ‘might well have been different‘.

It is important to note that, right at the outset of the judgment, Lord Kitchin (with whom the other Lords agreed) made clear that ‘the appeal is not concerned with the broader question whether technical advances generated by machines acting autonomously and powered by AI should be patentable. Nor is it concerned with the question whether the meaning of the term “inventor” ought to be expanded, so far as necessary, to include machines powered by AI which generate new and non-obvious products and processes [48] … This appeal is concerned instead with the much more focused question of the correct interpretation and application of the relevant provisions of the 1977 Act to the applications made by Dr Thaler.’ [50] The court recognised that, in view of rapid advances in AI technology, these broader questions are increasingly important and alluded to a potential shift in the legal landscape as a result. However, in citing the judgement of Laing LJ in the Court of Appeal, the Supreme Court was clear that ‘If patents are to be granted in respect of inventions made by machines, the 1977 Act will have to be amended’ [79].

Whether AI can be an inventor for the purposes of patent law has received global attention with Dr Thaler filing test patent applications in different jurisdictions around the world, including the European Patent Office. The current legal position on an international level appears to be that an inventor for patentable inventions must be a human or a person with legal capacity.

The full Supreme Court judgment can be accessed here.

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