Dabus rejected again as USPTO blocks AI ‘inventor’ patent
The US Patent and Trademark Office (USPTO) has confirmed that an artificial intelligence (AI) can’t be named as an inventor on a patent application.
Back in July 2019, a team at the University of Surrey in the UK filed patent applications in multiple jurisdictions which list an AI application, Dabus, as the sole inventor.
Ryan Abbott, professor of law and health sciences at the University of Surrey who led the team, told WIPR that the goal of the filings was to “raise awareness and effect change” in patent law.
The USPTO’s ruling, handed down yesterday, April 27, came in response to a request for reconsideration of an earlier decision by the office, which held that the AI patent application was incomplete because it didn’t indicate the owner’s name.
While the petitioner argued that inventorship shouldn’t be limited to natural persons and so identification of Dabus as the inventor is proper, the USPTO disagreed.
According to the USPTO, the patent statutes preclude the “broad interpretation” that an ‘inventor’ could be construed to cover machines.
“Title 35 of the United States Code consistently refers to inventors as natural persons … Therefore, interpreting ‘inventor’ broadly to encompass machines would contradict the plain reading of the patent statutes that refer to persons and individuals,” said the USPTO.
Two court decisions were also cited in the reasoning, with the USPTO noting that the US Court of Appeals for the Federal Circuit’s had explained that a state could not be an inventor in University of Utah v Max-Planck-Gesellschaft.
The Federal Circuit’s decision in Beech Aircraft Corp v EDO Corp, which concluded that “only natural persons can be inventors”, was also cited.
“While these Federal Circuit decisions are in the context of states and corporations, respectively, the discussion of conception as being a ‘formation in the mind of the inventor’ and a ‘mental act’ is equally applicable to machines and indicates that conception—the touchstone of inventorship—must be performed by a natural person,” said the USPTO.
Finally, the office also mentioned the “Manual of Patent Examining Procedure”, which explains that the threshold question for inventorship is “conception”.
EPO and IPO decisions
The petitioner also argued that USPTO should take into account the position adopted by the European Patent Office (EPO) and the UK Intellectual Property Office (IPO) that Dabus created the invention at issue, but cannot be named as the inventor.
In late 2019, the EPO rejected two applications that listed Dabus as the sole inventor, concluding that European law requires an inventor to be a “natural person”. The IPO also rejected two Dabus applications.
However, the USPTO said it had not made any determination concerning who or what actually created the invention and that the EPO and IPO were interpreting and enforcing their own laws.
Finally, the petitioner also outlined policy considerations to support its position, claiming that allowing a machine to be listed as an inventor would incentivise innovation using AI systems and reduce the improper naming of persons as inventors who don’t qualify as inventors.
“These policy considerations notwithstanding, they do not overcome the plain language of the patent laws as passed by the Congress and as interpreted by the courts,” concluded the USPTO, denying the request to reconsider.
As a final decision, no further requests for reconsideration will be entertained.
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