USPTO: AI Cannot Be Named as Inventor on Patent

April 28, 2020

By Isi Caulder and Ray Kovarik

On April 27, 2020, the United States Patent and Trademark Office published a petition decision stating that under current law, only natural persons may be named as an inventor in a patent application. The agency’s decision stems from the USPTO’s rejection of a U.S. patent application that listed an autonomous entity, named DABUS, as the inventor. DABUS stands for “Device Autonomously Bootstrapping Uniform Sensibility” and is a “Creativity Machine” that uses neural networks to generate new inventions. The decision is available on the Artificial Intelligence page and the Final Decisions by the Commissioner for Patents page of the USPTO website.

This USPTO statement is consistent with the EPO’s position as articulated in its reasons for rejecting two European DABUS patent applications on January 27, 2020. The two DABUS applications were refused by the EPO following oral proceedings with the applicant in November 2019, on the grounds that they do not meet the legal requirement of the European Patent Convention (EPC) that an inventor designated in the application has to be a human being, and not a machine. Similarly, the UK Intellectual Property Office (UKIPO) rejected the applications for failing to file a specific form for designating the inventor. The UKIPO stated that the inventor must be a natural person and that it was not for the UKIPO to take a different interpretation absent some judicial or legislative action. The UKIPO also noted that the applicant was not entitled to apply for the patent because there was no law that allowed for the transfer of ownership of an invention from the inventor purely through the applicant’s ownership of the inventor. This is described in more detail in Bereskin & Parr’s AI Year in Review article.

On February 5, 2020, the Canadian Technology Law Association (CAN-TECH) presented The Artificial Inventor? A panel discussion on patenting AI-generated inventions with World-Renowned Professor Ryan Abbott, which was hosted by Bereskin & Parr’s AI practice group. Dr. Ryan Abbott is part of the team that made headlines for its patent applications that designated DABUS as the inventor. During the panel discussion, he drew an analogy to people, in that there may be many people involved in the inventive process, such as lab assistants carrying out experiments. However, running experiments does not make them inventors. Rather, it is the conceptual part that makes one an inventor.

AI is rapidly evolving, and it will be interesting to see how the law develops, particularly as it relates to authorship and inventorship. For more information on developing AI-based technology projects, licensing, or enforcing intellectual property, please contact Isi Caulder or Bhupinder Randhawa, co-leaders of the Artificial Intelligence (AI) practice group.

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Author(s):

Isi Caulder Isi Caulder
B.A.Sc. (Eng. Sci.), M.A.Sc. (Elec. Eng.), J.D.
Partner
416.957.1680  
Ray Kovarik Ray Kovarik
B.A. (Comp Sci & Economics), M.B.A., L.L.M. (IP Law), J.D.
Associate
416.957.1186