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Freshfields TQ

Technology quotient - the ability of an individual, team or organization to harness the power of technology

| 4 minutes read

AI Output: International Thoughts on Patent and Copyright Protection (Part 2: Patents)

Recent decisions around the world have begun to shed light on the question of whether works and inventions produced using GenAI systems are eligible for copyright and patent protection.

In this two part blog, we compare and contrast positions on this question in China, the US, the EU and the UK.

For Part 1, covering copyright protection of AI-generated outputs, see here.



Before Christmas 2023, the UK Supreme Court handed down judgment in Thaler v Comptroller-General of Patents, Designs and Trademarks [2023] UKSC 49, ruling on one in a slew of international patent applications that list an AI machine, DABUS, as the inventor (the claimant, Thaler, was the same Dr Thaler as in the USCO decision referred to in the copyright blog available here). 

The issues before the court were narrowly confined to the meaning of “inventor” under the Patents Act and entitlement to apply for a patent. As had been expected, the Court held that an inventor within the meaning of the Patents Act must be a natural person. Any other person (natural or legal) to whom a patent may be granted must make their application through the inventor and by reference to a closed set of circumstances by which a person other than an inventor may be granted a patent (e.g., where that person is the employer of the inventor). 

The Court thought it was plain that Dr. Thaler could not satisfy either of these requirements: 

  • a machine such as DABUS was not a person, natural or legal, and so was incapable of being listed as the inventor for the purposes of a patent application. 
  • Thaler had failed to prove that he was entitled to apply for the patent purely because of his ownership of DABUS (as ownership of a machine is not one of the circumstances in which a person other than an inventor can derive the right to be granted a patent).

Unlike in the UK Copyright, Designs and Patents Act, there is no provision in the Patents Act that confers a right to obtain a patent generated autonomously by a machine on a person (in any circumstances). The Court dismissed Dr. Thaler’s argument that the doctrine of accession operated to confer a right to anything other than tangible property (i.e., such as property in the apples grown from an apple tree), and therefore not to the right to apply for and obtain a patent.

By design, it was never Dr. Thaler’s argument that he had merely used AI as a sophisticated tool, it was always his argument that the invention was entirely conceived by DABUS. The Court explicitly left the door wide open to come back to this idea, noting “[h]ad he done so, the outcome of these proceedings might well have been different”. Instead, the applications had been brought for the explicit purpose of attempting to establish a precedent. 

Thaler has so far only been successful in obtaining patent protection for a DABUS-generated invention in South Africa, where there is no substantial pre-grant examination system. 


On 21 December 2023, the China National Intellectual Property Administration (CNIPA) amended its Patent Examination Guidelines to (among other things) expressly state that an AI system cannot be named as an inventor on a patent application. The revised Patent Examination Guidelines took effect on 20 January 2024. 

A draft version of the revised Patent Examination Guidelines containing this amendment was first introduced for public consultation on 10 November 2020, likely in response to Dr. Thaler’s 2019 PCT application for “FOOD CONTAINER AND DEVICES AND METHODS FOR ATTRACTING ENHANCED ATTENTION” (WO2020079499A1), which named DABUS as an inventor. 

In the explanatory notes, CNIPA stated that the amendment was intended to align the Patent Examination Guidelines with the position in the PRC Civil Code, which states that only natural persons, legal subjects and unincorporated organisations can hold IP rights. 


The United States Patent and Trademark Office (USPTO) denied two patent applications filed by Dr. Thaler in 2019 that listed DABUS as the inventor, finding DABUS is not a valid inventor - since it is not a natural person. The USPTO cited precedent denying inventorship status to states and corporations. This decision was later affirmed by the Federal Circuit and the US Supreme Court subsequently refused to review that Federal Circuit ruling.

On February 13, 2024, the USPTO published guidance acknowledging that “AI-assisted inventions are not categorically unpatentable”. The USPTO’s guidance allows for the use of AI systems in developing inventions but requires a human being to have made a significant contribution in working the AI tool (beyond merely recognising the problem or recognising the value of the solution proposed by an AI). That significant contribution could arise if a person “designs, builds, or trains an AI system in view of a specific problem to elicit a particular solution”, but could even be in the form of a specific prompt put together in order to elicit a particular solution from an existing AI tool. The USPTO’s guidance emphasises that there is no bright-line test, and the examples it gives of a significant contribution made by a human are non-exhaustive.


Recent attempts to register machines powered by AI as inventors of patentable inventions have similarly been unsuccessful in Europe. For example, the Board of Appeal of the European Patent Office (EPO) refused two patent applications filed by Dr. Thaler that referred to DABUS as inventor. The Board held that under the European Patent Convention (EPC) an inventor has to be a person with “legal capacity”, and that machines do, at present, not have such legal capacity. 

The German Patent and Trade Mark Office has likewise ruled that an inventor must be a natural person and rejected the applications. In a recent decision on one of the DABUS applications, the German Federal Patent Court came to the same conclusion as the EPO and held that an AI system cannot be named as an inventor on a patent application. According to public sources, this decision is currently under review by the German Federal Court of Justice.


ai, innovation, intellectual property