Recently, the United States Patent and Trademark Office (USPTO) released proposed guidelines addressing the complex issue of AI inventorship. The PTO is not the only agency attempting to tackle this issue; jurisdictions across the globe have been grappling with whether AI-generated inventions are patentable without any human intervention.
Through a group called The Artificial Inventor Project, pro bono attorneys have been attempting to explore the various legal contours of AI inventorship by prosecuting patent applications of AI-generated inventions through various global patent offices and documenting the hurdles they go through to protect these inventions.[1] Each of the inventions were created solely by the AI-system (called “DABUS,” short for “Device for the Autonomous Bootstrapping of Unified Sentience”). DABUS is a patented system developed to simulate a neural network.[2] The Artificial Inventor Project seeks to obtain patents on the inventions by naming only DABUS as the inventor. The Project has applied for patents across the world, and the results seem to be generally consistent: jurisdictions are unwilling to grant patent rights to AI-generated inventions where the sole named inventor is the AI-tool itself.
Out of nineteen jurisdictions, South Africa is the only patent office that has granted a patent on an AI-generated invention where the sole named inventor was the AI-tool itself.[3] All other jurisdictions rejected the patent application based on one universal reason: an inventor must be a natural person. However, the justifications for this requirement varies among the jurisdictions:
- In Europe, the Board of Appeal of the European Patent Office noted that an inventor must be “a natural person with legal capacity.”[4] While this requirement is not found in the language of the EU Patent Act itself, the Board noted that this definition is the ordinary meaning of the term “inventor.”[5]
- In the United States, the Federal Circuit noted that 35 U.S.C. § 100(f) defines the “inventor” as an “individual” or “individuals,” thus requiring the inventor be human.[6]
While the term “individual” was not defined by the US Patent Act, the court noted that the ordinary meaning of the term refers to a human being.[7]
- In Canada, the Canadian Patent Office noted that an inventor cannot be a machine because machines do not “have rights under Canadian law” nor is it possible for machines to “transfer those rights to a human.”[8]
- In Korea, the Seoul High Court noted that Article 33(1) of the Patent Act specifically states that patent rights can only be granted to a “person who makes an invention or a successor thereof.”[9]
Interestingly, some jurisdictions seem sympathetic to the plight of AI, while also agreeing that current laws do not allow for patents on AI-generated inventions. In May of 2024, a Tokyo District Court dismissed an appeal from Japan’s Patent Office rejection of a patent application for an AI-generated invention.[10] There, the laws of Japan defined “inventions” to mean “products of human activity,” foreclosing the possibility that the sole inventor on a patent could be AI.[11] However, presiding Judge Motoyuki Nakashima acknowledged that that this was something that parliament may need to address given that the current patent laws did not anticipate these new types of “inventors.”[12]
While the current climate for protecting solely AI-generated inventions via patent seems bleak, the question remains whether governing entities will begin to create legislation regarding patent protection of AI-generated inventions. The topic has already started to create a buzz, with the U.S. House of Representatives holding a panel on “Artificial Intelligence and Intellectual Property: IP Protection for AI-Assisted Inventions and Creative Works.”[13]
Further, the overall patent landscape for AI-generated inventions appears to be much more welcoming so long as the AI-tool is not the sole named inventor. For example, on February 13, 2024, the United States Patent and Trademark Office (“USPTO”) issued guidance on AI-Assisted Inventions.[14] In its guidance, the USPTO noted that, “AI-Assisted Inventions are not Categorically Unpatentable for Improper Inventorship” and provides that the individuals can name natural persons who made significant contributions to the invention in order to meet the inventor requirement.[15] In addition, in Germany, the Federal Patent Court allowed an AI-generated invention when the natural person “who prompted the artificial intelligence DABUS to create the invention” was named as the inventor.[16] Thus, it appears that, until legislation is enacted to address the patentability of AI-generated inventions, human involvement remains a requirement across the globe.
| Country |
Patent/Application No. |
Status |
Justification |
| South Africa |
ZA2021/03242 |
Granted |
|
| United Kingdom |
GB1816909.4 and GB1818161.0 |
Denied and currently on appeal. |
Inventorship can only be given to a natural person under section 7 and 13 of the Patents Act. |
| Europe |
EP3564144 |
Denied and currently on appeal. |
Article 81 of the EPC requires an inventor to be a person with legal capacity. |
| Europe |
EP3563896 |
Denied and currently on appeal. |
Article 81 of the EPC requires an inventor to be a person with legal capacity. |
| Germany |
10 2019 128 120.2 |
Allowed due to the change of inventor to a natural person. |
§ 37(1) of the Patent Act require the inventor to be a natural person. |
| Germany |
10 2019 129 136.4 |
Denied. |
§ 37(1) of the Patent Act require the inventor to be a natural person. |
| Korea |
KR 10-2020-7007394 |
Denied and currently on appeal. |
Article 33(1) states that a “Persons Entitled to a Patent” is “[a] person who makes an invention or a successor thereof has a right to a patent under this Act.” |
| Japan |
JP 2020-543051 |
Denied and currently on appeal. |
Denied because the Patent Act does not contemplate a non-natural persons as the inventor. |
| New Zealand |
776029 |
Denied and currently on appeal. |
The Patent Act requires the inventor to be a natural person. |
| China |
CN 2019800061580 |
Denied and currently on appeal. |
Patent rights can only be given to “civil subjects” which is defined as “individuals or entities who hold civil rights, fulfil civil obligations and are affected by legal outcomes.” |
| United States |
16/524,350 |
Denied. Appeals exhausted. |
The inventor must be a natural person. |
| Australia |
AU 2019363177 |
Denied. Appeals exhausted. |
Precedent requires the invention to arise from the mind of a natural persons. |
| Canada[17] |
CA 3,137,161 |
Denied. |
Machines do not have rights under Canadian law. |
| Saudi Arabia |
521422019 |
Denied. |
The inventor must be a natural person. |
| Taiwan |
TW 108140133 |
Denied. |
Patent Examination Guidelines state that the inventor must be a human. |
| Taiwan |
TW 108137438 |
Denied. |
Patent Examination Guidelines state that the inventor must be a human. |
[1] Patent, artifcialinventor.com (2023), https://artificialinventor.com/patent/ (last visited July 25, 2024).
[2] See U.S. Patent No. 10,423,875.
[3] Patents, 56 Pat. J. 255, No. 7, July 26, 2023, https://iponline.cipc.co.za/Publications/PublishedJournals/E_Journal_July%202021%20Part%202.pdf.
[4] Boards of Appeal of the European Patent Office, Datasheet for the decision of 21 December 2021, § 4.3.1 (Dec. 21, 2021), https://www.epo.org/boards-of-appeal/decisions/pdf/j200008eu1.pdf.
[5] Id.
[6] Thaler v. Vidal, 43 F.4th 1207 (Fed. Cir. 2022).
[7] Id.
[8] Canadian Patent Application 3,137161 Office Letter (Nov. 8, 2021), https://www.ic.gc.ca/opic-cipo/cpd/eng/patent/3137161/summary.html?type=number_search&tabs1Index=tabs1_1.
[9] Seoul Administrative Court, Thaler v. Commissioner of the Korean Intell. Prop. Office, No. 2022 Guhap 89524(June 30, 2023).
[10] Tokyo District Court (May 2024), https://artificialinventor.com/wp-content/uploads/2024/05/092981_hanrei.pdf.
[11] Id.
[12] Id.
[13] House of Representatives Judiciary Committee, Artificial Intelligence and Intellectual Property: Part III – IP Protection for AI-Assisted Inventions and Creative Works (Apr. 10, 2024, 10:00 AM), https://judiciary.house.gov/committee-activity/hearings/artificial-intelligence-and-intellectual-property-part-iii-ip (last visited July 25, 2024).
[14] Inventorship Guidance for AI-Assisted Inventions, 89 Fed. Reg. 10043 (Feb. 13, 2024), https://www.federalregister.gov/documents/2024/02/13/2024-02623/inventorship-guidance-for-ai-assisted-inventions.
[15] Id.
[16] The Technical Appeals Board of the Federal Patent Court, Thaler v. President of the Ger. Patent & Trademark Office, No. 11 W (pat) 5/21 (Nov. 11, 2021), https://artificialinventor.com/wp-content/uploads/2022/12/DABUS-decision-BPatG-English-translation.pdf.
[17] Canadian Patent Application 3,137161 Office Letter (Nov. 8, 2021), https://www.ic.gc.ca/opic-cipo/cpd/eng/patent/3137161/summary.html?type=number_search&tabs1Index=tabs1_1.
