To Invent is Human: U.S. Patent and Trademark Office Rejects AI System as an Inventor

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The United States Patent and Trademark Office (USPTO) issued a decision on April 22, 2020 in which it concluded that an artificial intelligence (AI) system could not be recognized as an inventor in a US patent application.[1]  In doing so, it has ruled that only “natural persons” are eligible as inventors.

Background

The patent application in question is directed to controlling light emissions from beacons to make them more noticeable to humans.[2] The application listed a single inventor with the given name indicated as “DABUS” and family name “(Invention generated by artificial intelligence)”. The individual who filed the application, Stephen L. Thaler[3], identified himself as the legal representative of DABUS[4] and the application’s assignee.

Application documents submitted by Thaler concerning inventorship noted that the invention was conceived by a “creativity machine” named “DABUS” (i.e. an AI system), a series of neural networks trained with information relevant to the field of technology.

The USPTO objected to the application as being incomplete because it did not identify each inventor by his or her legal name. Thaler petitioned to have the objection dismissed without success. Thaler then filed a second petition requesting reconsideration of the dismissal of his first petition on the grounds that inventorship should not be limited to natural persons, and therefore, that naming DABUS as the inventor was proper.

The USPTO’s Opinion

The USPTO relied primarily on the relevant U.S. patent legislation and U.S. Federal Circuit case law to conclude that an inventor must be a natural person.

The decision refers to Title 35 of the United States Code (the U.S. equivalent of Canada’s Patent Act) to point out that an inventor is defined as an “individual” or “individuals” (in the case of joint inventors) that invented or discovered the subject matter of the invention.[5] This individual ought to be a natural person because the legislation consistently uses the terms “whoever”, “himself”, or “herself” throughout to refer to an inventor.[6]

The USPTO also surveyed decisions of the U.S. Federal Circuit, which have also consistently required that an inventor be a natural person.  The referenced case law appears to focus on the idea of “conception” of an invention, conceived by way of “formation in the mind of the inventor”, as a key aspect of inventorship. The USPTO noted that a natural person must perform the act of conception, as described in the case law.

Based on the foregoing, the USPTO concluded that an “inventor”, under current U.S. patent law, excludes AI systems or machines.

It is interesting to note that the USPTO’s opinion relies on the “current” state of U.S. patent law, which limits inventorship to natural persons. By using this qualifier, the U.S. patent authority seems to be open to the possibility that legislation and case law may evolve over time to expand the concept of inventorship to include AI machine as inventors.

Corresponding Decisions in other Jurisdictions

Thaler previously filed counterpart applications with the European Patent Office (EPO) and the United Kingdom Intellectual Property Office (UKIPO) covering the same invention and identifying DABUS as the inventor. The EPO[7] and the UKIPO[8] both issued decisions rejecting DABUS as an inventor on January 28, 2020 and December 4, 2019, respectively. The USPTO, EPO and UKIPO applied their respective laws in a similar manner in addressing the question of inventorship involving AI systems and machines.

The EPO held that the European legal framework pursuant to the European Patent Convention makes reference only to natural persons in the context of inventorship, noting that legislators clearly intended for a natural person to be an inventor. Under this framework, AI systems or machines have no legal personality comparable to natural or legal persons and therefore AI systems or machines are not entitled to rights such as ownership over their inventive output, nor are they capable to transfer such ownership rights.

The UKIPO also refused to recognize DABUS as the inventor because the relevant sections of the UK Patents Act and case law anticipate that an inventor be a natural person. However, the UKIPO’s opinion emphasizes that it accepted that DABUS created the invention set out in the corresponding UK application.

With AI-based technologies becoming more and more common, patent offices around the world have seen an uptick in AI-based applications. So far, three major intellectual property offices have taken their position in respect of human-only inventorship. It will be interesting to follow how this area of patent law evolves and whether other patent offices may elect to take on a different stance on the question of inventorship in the AI context.

For more information about our firm’s Intellectual Property expertise, please visit our Intellectual Property group’s page.

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[1] https://www.uspto.gov/sites/default/files/documents/16524350.pdf

[2] U.S. application Serial No. 16/524,350 filed July 29, 2019 entitled “Devices and Methods for Attracting Enhanced Attention”. A description of the invention is available by referring to the counterpart European Patent Office application: https://patents.google.com/patent/EP3563896A1/en?oq=EP3563896

[3] http://imagination-engines.com/iei_founder.php

[4] http://imagination-engines.com/iei_dabus.php

[5] 35 USC 100(f) provides: The term "inventor" means the individual or, if a joint invention, the individuals collectively who invented or discovered the subject matter of the invention.  (emphasis ours)

[6] See e.g., 35 USC 101 “Whoever invents or discovers any new and useful process, machine…may obtain a patent therefor…”; 35 USC 115(b) “An oath or declaration under subsection (a) shall contain statements that … such individual believes himself or herself to be the original inventor…”.  (emphasis ours)

[7] https://www.epo.org/news-issues/news/2020/20200128.html see decision concerning European patent application No. EP18275174

[8] https://www.ipo.gov.uk/p-challenge-decision-results/o74119.pdf

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