INSIGHT

AI inventorship knocked down in US

By Nick Li
Intellectual Property Patents & Trade Marks Technology

In brief 3 min read

The United States Patent and Trade Marks Office (the USPTO) rejected a patent application designating an artificial intelligence machine, DABUS, as inventor. The administrative decision has implications for Australia, where the issue is yet to be formally considered.

Key takeaways

  • USPTO has rejected a patent application designating an artificial intelligence machine as inventor.
  • The outcome follows similar decisions by the UKIPO and EPO in 2019.
  • There is no Australian decision on AI inventorship yet, but it appears increasingly likely that legislative amendment will be necessary to permit AI inventorship.

Who in your organisation needs to know about this?

Patent attorneys, and persons interested in developments in artificial intelligence.

USPTO rejects DABUS patent application

The USPTO has rejected the application Stephen Thaler filed for 'Devices and Methods of Attracting Enhanced Attention', which designated DABUS, an artificial intelligence machine, as the inventor.

This result is consistent with earlier decisions by the EPO and UKIPO relating to the corresponding patent applications in Europe and the UK, respectively. As discussed in our previous coverage, the USPTO decision was not unexpected.

Inventor must be identified, and must be a natural person

Unlike the EPO and UKIPO decisions, which indicated a recognition of DABUS as the actual inventor of the claimed invention, the USPTO decision avoided consideration of this issue entirely. The reasons for the USPTO's decision instead focused solely on the legal requirement to disclose a natural person as the inventor.

In its reasons, the USPTO referenced:

  • words such as 'whoever', 'himself' and 'herself' used in sections of Title 35 of the United States Code;
  • decisions of the Federal Circuit Court that stated inventors of a patent are 'individuals'; and
  • Title 37 of the Code of Federal Regulations, and concepts of 'mental' and 'mind' in the Manual of Patent Examining Procedure,

in support of its conclusion that 'only natural persons can be inventors'. This is distinct from owners of an invention, who can be legal persons (including corporations).

Interestingly (and perhaps desperately), Thaler argued that the USPTO had granted patents relating to the DABUS machine and, in doing so, implicitly legalised the process by which DABUS arrives at an invention. The USPTO rejected this submission, reasoning that granting a patent for a camera does not mean the camera can hold a copyright.

Matter for reform?

The USPTO noted that the policy considerations Thaler raised in support of his case do not overcome the 'plain language of the patent laws as passed by the congress and as interpreted by the courts'. Accordingly, in the US at least, it seems that legislative reform is necessary to permit artificial intelligence machines to be named as inventors.

Australia remains undecided

Australia is yet to decide whether AI can be validly named as inventor on patent applications. However, given the EPO, UKIPO and now USPTO decisions relating to DABUS, it seems increasingly likely that legislative amendment will be needed to permit AI inventorship.