In its news release accompanying its response to the consultation, CIPA says that at present there is no clear consensus as to whether existing AI systems can make an “invention” that could be protected under the patent system. However, AI systems are already involved in product development and innovation, which raises questions relating to AI systems and inventorship.

CIPA notes that the current UK legal position is that a named inventor must be human, and the inventor is defined in statute as the “actual deviser” of the invention. The UK’s “actual deviser” wording has mostly been used to determine inventorship when a team of people has produced an invention, with some of the team making an innovative contribution and others a more routine contribution. This is different from the situation in which a human works with an AI system to create an invention.

Therefore, case law relating to the former situation may be difficult to apply to the latter and this might lead to legal uncertainty. In addition, the “devising” definition of UK law is not shared by many other jurisdictions and might restrict patentability in the UK compared with other jurisdictions. UK patentability may be difficult for inventions made by a human working in close partnership with an AI system if the human cannot clearly demonstrate that they are the “actual devisor” of the invention.

Subject to any possible UK Supreme Court appeal in Thaler v Comptroller General of Patents [2021] EWCA Civ 1374, a UK patent application naming only an AI system as inventor will be refused by the UK IPO. A similar outcome is expected at the EPO and the USPTO. However, CIPA says, there is potential for UK outcomes to differ from those in other countries for cases centring on the interpretation of “actual deviser”; such cases might occur as a result of the involvement of an AI system in the creation of the invention. To access the news release, click here.