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Aipedia: Patent and trade mark attorneys
Under UK law an inventor must be a natural person, so an AI system cannot be named as inventor on a patent application. Attorneys advising on AI-assisted inventions need to identify the human inventor and the chain of entitlement correctly.
Part of: AI in patent and trade mark attorneys
In short
In Thaler v Comptroller-General [2023] UKSC 49 the Supreme Court held that an inventor under the Patents Act 1977 must be a natural person. DABUS, an AI system, could not be an inventor, owning the machine did not give Thaler a right to the patent, and the applications were treated as withdrawn. Attorneys must now help clients identify who the human inventors are when AI was used, and how ownership passes to the applicant. Errors can lead to challenges on inventorship or entitlement, and to claims against the attorney, which PI usually covers subject to the policy terms.
In Thaler v Comptroller-General of Patents, Designs and Trade Marks [2023] UKSC 49 (20 December 2023), Dr Thaler applied for patents naming his AI system, DABUS, as the inventor. The Supreme Court held that an inventor under the Patents Act 1977 must be a natural person, so DABUS could not be an inventor. Dr Thaler had no right to the patents simply by owning the machine. Because no valid inventor or entitlement was identified, the applications were treated as withdrawn.
The facts were stark: the applicant said the machine, not a person, was the inventor. Many real cases are likely to be different, with people using AI tools at various stages of the inventive process. Applying the ordinary principles of inventorship to those facts is where attorney judgment matters.
IPReg's AI guidance does not address inventorship, but the existing duties of competence and client information in the Core Regulatory Framework apply to this advice.
Employment and contractor terms matter more when AI is involved, because the people directing the tools may sit outside the client's own staff, for example at a university, a consultancy or a software supplier. Their contracts may not deal with inventions at all, or may say that results belong to them. The attorney may be the first person to ask the question.
A client may want to name a senior person who did not contribute, or to leave out a contractor whose prompts and judgment shaped the result. Each choice can create a later challenge. If ownership does not trace properly from the true inventor, a third party may claim entitlement. A competitor facing infringement proceedings may argue that inventorship is wrong to put pressure on the patentee.
Illustrative scenario: a start-up uses an external data scientist and a generative AI tool to develop a new formulation. The firm names the start-up's founder as sole inventor without asking how the work was done. During a funding round, due diligence finds that the data scientist's contribution was central and there is no assignment from them. The investor delays, the data scientist asserts rights, and the start-up blames the firm.
A negligence claim over inventorship or entitlement advice would usually fall within IPReg-compliant PI, subject to the policy terms. Losses may include the cost of correcting the record, entitlement proceedings, settlement with a co-inventor or a lost transaction. Problems can surface years after filing, so the claims-made basis, retroactive date and prompt notification matter. See IPReg PI requirements.
Apex arranges PI for patent attorneys, and a broker can review how your cover treats long-tail inventorship and entitlement claims. See the attorneys hub, patenting AI after Emotional Perception and AI patent drafting.
No. In Thaler v Comptroller-General [2023] UKSC 49 the Supreme Court held that an inventor under the Patents Act 1977 must be a natural person. The applications naming DABUS were treated as withdrawn.
Thaler concerned a claim that the machine itself was the inventor. Where people used AI as part of their work, the question is who the human inventors are under ordinary principles. Attorneys should analyse and record each person's contribution.
Yes. You cannot identify the human inventors properly without knowing how the invention was made. An inventorship questionnaire that asks specifically about AI tools, who used them and who made the key decisions gives you the facts and a record of the advice.
If wrong inventorship or a broken chain of title leads to a challenge or a lost deal, the client may claim against the attorney. That would usually fall within IPReg-compliant PI, subject to the policy terms, but such claims can surface years after filing.
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