USPTO finds an invention created by an AI machine is not patentable

The US Patent and Trade Mark Office has found that DABUS is not a person and so cannot be considered an inventor of a patent. DABUS is an artificial intelligence (AI) machine. The USPTO accepted the indication of DABUS as inventor at face value and did not argue that AI technology is only a tool which is incapable of independently creating an invention. The USPTO reached a decision by following Federal Circuit case law and by interpreting the patent statutes.

The decision is available at

https://www.uspto.gov/sites/default/files/documents/16524350_22apr2020.pdf?utm_campaign=subscriptioncenter&utm_content=&utm_medium=email&utm

The facts of the decision

The decision concerns US patent application 16/524,350 filed in the name of a human applicant. The invention is about a warning light that flashes in a fractal based sequence to provoke attention.

The applicant filed a declaration of inventorship and an application data sheet listing an AI machine called DABUS as inventor.

The USPTO wrote to the applicant saying that some of the parts of the patent application were missing because the naming of a machine as inventor does not meet the requirements and that a person must be identified. The applicant would not list a human as an inventor. The applicant asked for the requirement to be waived. The USPTO denied the waiver request meaning that the patent application cannot result in a granted patent.

Legal arguments

The USPTO argued that “interpreting “inventor” broadly to encompass machines would contradict the plain reading of the patent statutes that refer to persons and individuals” and it would also contradict the manual of patent examination practice which uses terms such as “mental” and “mind”.

The USPTO referred to a US Court of Appeals for the Federal Circuit case as evidence that “the patent laws require that an inventor be a natural person”. In the case it was stated that inventorship involves conception which is a mental act. “To perform this mental act, inventors must be natural persons and cannot be corporations or sovereigns.”

The USPTO referred to another Federal Circuit case in which it was stated that “only natural persons can be inventors”.

Policy arguments

The Applicant argued that allowing a machine to be listed as an inventor would:

• Incentivize innovation using AI systems
• Reduce improper naming of persons as inventors who did not quality as inventors
• Support the public notice function

The USPTO said that the policy considerations “do not overcome the plain language of the patent laws as passed by the Congress and as interpreted by the courts”.

Comments

The USPTO decision is a useful decision because it clearly sets out the legal arguments. The USPTO decision makes it clear that legislative change is needed if there is a desire to allow patents for inventions created by AI machines.

There is a statement in the decision which says “identifying a natural person, who did not invent or discover the subject matter of the invention, as the inventor in a patent application would be in conflict with the patent statutes”. The statement hints at the possibility of listing a human inventor as someone who discovers an invention which has been created by an AI machine. Perhaps there could be a possibility of enabling humans who discover inventions created by an AI machine to become inventors on corresponding patent applications?

There has been no challenge to the applicant’s assertion that DABUS is the inventor which is interesting in my view. There is an argument that AI technology in the present day is available as a tool only and is not capable of independently creating an invention.