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.

SUMMARY UPDATE (08/9/21): Since the initial post, South Africa has issued the world’s first patent that listed an AI inventor. Also, since the initial post, an Australian judge has become the first jurist to rule that AI systems can be recognized as an inventor on patent applications.

The below article provides additional details.

***

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.

UPDATE (08/9/21): Since the initial post, on July 28, 2021, South Africa has issued the world’s first patent that listed an AI inventor. The inventor is DABUS (“Device for the Autonomous Bootstrapping of Unified Sentience”). South Africa does not offer formal patent examination and instead simply requires applicants to merely complete a filing of their invention. Hence, the subject of whether an AI could be an inventor was not analyzed in detail.

Also, since the initial post, an Australian judge has become the first jurist to rule that AI systems can be recognized as an inventor on patent applications. Specifically, Justice Beach, of the Australian Federal Court, found that an inventor can be “non-human.” The patent applications at issue listed an AI inventor named DABUS (“device for the autonomous bootstrapping of unified sentience”). This decision is a split from rulings of other jurisdictions (such as the U.S. and the U.K.) that have considered the same DABUS applications, and that have found that only humans can be listed as inventors.

UPDATE (04/03/22): On January 31, 2022, the New Zealand patent office (IPONZ) found that an AI cannot be an inventor (or at least a sole inventor) under the current New Zealand Patents Act. See Decision re Patent Application No. 776029. At issue was the DABUS application, as filed with the New Zealand patent office. The New Zealand patent office found that New Zealand patent law uses the term “inventor” to refer to “only to a natural person, an individual” and “[t]hat inventors fall within the class of natural human persons is intrinsic to the proper construction of the Act.”

In late December 2021, the EPO affirmed that an EPO patent application cannot name an AI inventor as the sole inventor. If an AI inventor is to be named, there must be at least one human inventor jointly listed. The decision was made regarding the DABUS related applications EP18275163 (food container) and EP18275174(neural transmitter). Specifically, the EPO Legal Board of Appeal provided its decision in cases J 8/20 and J9/20. There, the EPO determined that only a human inventor could be listed as an inventor within the meaning of the European Patent Convention (EPC). 

In September 2021, the UK Court of Appeal affirmed its previous decision that a patent application must identify at least one human inventor. See Stephen Thaler v Comptroller General of Patents Trade Marks and Designs [2021] EWCA Civ 1374. By a majority (2 to 1), the UK Court of Appeal dismissed the appeal of Dr. Stephen Thaler (the creator of DABUS) who filed two patent applications naming DABUS as the sole inventor. The Court of Appeal affirmed that, under the UK Patents Act 1977, the right to apply for an invention must originate from a human inventor. 

UPDATE (04/26/2022): In April 2022, the Federal Court of Australia’s Full Court reversed an earlier Australian judge’s ruling previously finding that an AI (e.g., DABUS) can be listed on an Australian patent application as a sole inventor. The Federal Court of Australia’s Full Court found that Australian patent law, as currently written, requires a human inventor. 

****

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 Not solely. But can be listed jointly. 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 Stephen Thaler v Comptroller General of Patents Trade Marks and Designs [2021] EWCA Civ 1374 (Sep. 21, 2021). See Decision, Appl. No. GB 1818161.0 (denying the application listing DABUS AI as the sole inventor) (Dec. 4, 2019).
European Patent Office (EPO) Not solely. But can be listed jointly. At least one inventor designated in a European patent must be a natural person. See Press Communiqué on decisions J 8/20 and J 9/20 of the Legal Board of Appeal (Dec. 21, 2021); see also EPO publishes grounds for its decision to refuse two patent applications naming a machine as inventor (Jan. 28, 2020).
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.
South African Patent Office Yes The application may identify an AI inventor, at least where the South African application was filed based on an international application (e.g., a Patent Cooperation Treaty (PCT) application) designating an AI inventor, as previously accepted by the World Intellectual Property Organization (WIPO)
Australian Patent Office No Australian patent law, as currently written, requires a human inventor. Previously, an Australian lower court judge had found that an AI could be listed as a sole inventor on a patent application. However, this was later overturned by the Federal Court of Australia’s Full Court.
New Zealand Not solely. But can be listed jointly. At least one inventor designated in a New Zealand patent must be a natural person. See Decision re Patent Application No. 776029

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.

Subscribe to get updates to this post or to receive future posts from PatentNext. Start a discussion or reach out to the author, Ryan Phelan, at rphelan@marshallip.com or 312-474-6607. Connect with or follow Ryan on LinkedIn.