Can An Artificial Intelligence (AI) Be An Inventor? – Intellectual Property – United States – Mondaq News Alerts

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  • March 26, 2021
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United States:

Can An Artificial Intelligence (AI) Be An Inventor?

26 March 2021

Marshall, Gerstein & Borun LLP

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PatentNext Summary: 
Currently, patent laws require human inventors. For this reason, no
country or legal jurisdiction presently allows an Artificial
Intelligence (AI) to be an inventor. Such patent laws, however, are
typically decades old and we can expect continued debate, and
possible legislation, on the topic of whether an AI can be an
inventor.

Can Artificial Intelligence (AI) invent? No, according to
various patent offices and patent laws around the world. Resistance
to an AI as an inventor primarily stems from the fact that the
written text of existing patent laws refers to human inventors,
e.g., “individuals” or “persons,” which leaves
little or no room for interpretation of a non-human AI as an
inventor.

For example, under U.S. Patent law, the term
“inventor” is defined as an
“individual”
or individuals” who “invented or
discovered the subject matter of the invention.” 35 U.S. Code § 100(f).
Also, Section 101 expressly explains that
“[w]hoever invents or discovers any new
and useful process, machine, manufacture, or composition of matter,
or any new and useful improvement thereof, may obtain a patent
therefor.” 35 U.S. Code § 101. Such
statutory language thus describes an inventor in terms of a
person.

The United States Patent Office (USPTO) recently analyzed this
language to find that an AI cannot be an
inventor. See Decision on Petition, Appl. No.
16/524,350 (April 27, 2020). The patent
application listed no human inventor or human co-inventor, and
instead named only an AI inventor identified as  “DABUS
(the “Device for the Autonomous Bootingstraiming of Unified
Sentience”). Because the patent application failed to name a
human inventor and because of the U.S. Patent law’s express
language requiring human inventors, the USPTO denied the patent
application stating that “only natural persons can be
‘inventors.'” Id.

The USPTO denied the patent application despite the application
listing an application that may have fulfilled other patenting
requirements, such as utility and novelty. For example, the
invention, as presumably discovered by DABUS, was titled
“DEVICES AND METHOD FOR ATTRACTING ENHANCED ATTENTION,”
and disclosed a device for use during search-and-rescue
missions.

Other Patent Offices have come to the same conclusion regarding
AI inventors, including denying DABUS related patent applications
when filed in respective countries or
jurisdictions.   

The below table illustrates the position of Patent Offices of
several countries or jurisdictions, all of which currently do not
allow an AI as an inventor, each for the same or similar
reasons. 

Patent Office

Can an AI be an Inventor?

Reasoning

United States Patent Office

No

U.S. Patent law requires that an inventor must be a natural
person, as reflected in numerous references to an inventor as a
“person.” 
See  Decision on Petition, Appl. No.
16/524,350 (denying the application listing 
DABUS AI as the sole inventor)

United Kingdom Patent Office

No

AI is not a “person” as envisaged by sections 7 and 13
of the UK Patent Act and so cannot be considered an inventor.
See Decision, Appl. No. GB
1818161.0 (denying the application listing 
DABUS AI as the sole inventor)

European Patent Office (EPO)

No

The inventor designated in a European patent must be a natural
person. See EPO publishes grounds for its decision to
refuse two patent applications naming a machine as
inventor

Japan Patent Office

No

The Japan Patent Act describes an inventor as a natural
person. See  Article 29 (1).

China Patent Office

No

The Chinese Patent Law describes that a patentee may be a
natural person or a legal entity, but the inventor must be a
natural person. The Chinese Guidelines for Patent Examination
describe that “the inventor shall be an
individual.” Guidelines for
Examination at Section 4.1.2
(“Inventor”). Thus, non-humans cannot be inventors.

Time will tell whether an AI can be an inventor, but one thing
is for sure: it will likely take legislative action to change the
various and respective country’s or jurisdiction’s patent
laws before an AI can be named as an inventor on a patent
application.

The content of this article is intended to provide a general
guide to the subject matter. Specialist advice should be sought
about your specific circumstances.

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Source: https://www.mondaq.com/unitedstates/patent/1051190/can-an-artificial-intelligence-ai-be-an-inventor