Lee International

DABUS (Device for the Autonomous Bootstrapping of Unified Sentience) is an artificial intelligence (AI) system developed by Dr. Stephen Thaler.  Dr. Thaler filed patent applications for inventions invented by DABUS, which list DABUS as a sole inventor in eighteen (18) countries.  Lee International prosecuted a patent application of DABUS in Korea (“Subject Application”).  Among 18 countries, a DABUS patent was granted only in South Africa.  Most of the countries such as the US, the UK and Germany rejected the applications due to the Al inventorship issue, and the cases are under appeal.   

Recently, the Korean Intellectual Property Office (KIPO) issued a decision nullifying the Subject Application.  In the decision, the KIPO asserted that although the Patent Act prescribes that a natural person must be listed as an inventor, the Subject Application indicates the name of AI, not the name of a natural person, as an inventor, and thus, does not comply with the formality requirements for an inventor.  However, the KIPO’s decision does not appear to be entirely proper for the following reasons. 

First, contrary to the legislations in other countries such as the US, the Korean Patent Act does not provide any definition for the term “inventor,” while the terms “invention,” “patented invention,” and “practice” are defined.  With respect to the Subject Application, the KIPO determined that an inventor must be a natural person based on Article 33(1) of the Patent Act, which prescribes that a person who creates an invention or a successor of the inventor has a right to obtain a patent pursuant to the Patent Act.  However, this provision is merely to restrict an unentitled person from acquiring patent rights.  It cannot be construed that the legislative intent of this provision was to exclude inventors other than a natural person. 

In addition, “DABUS,” which is listed as the inventor in the Subject Application, is a sole party that made substantial contribution to create the invention of the Subject Application.  In view of the previous Supreme Court decision holding that an inventor is required to make substantial contribution to the creation of a technical concept, DABUS qualifies as the inventor for the Subject Application.  Nevertheless, the KIPO requested that an inventor for the Subject Application should be amended to name a natural person.  This request is unfairly demanding the applicant to name an untrue inventor who did not make substantial contribution to the invention, which would make the Subject Application to have grounds for rejection and invalidation, and provide the public with misleading information.  

It is regrettable in that the KIPO did not review whether the AI invention itself deserves to be protected by a patent, while simply proclaiming that only a natural person qualifies as an inventor.  This decision would discourage the technological developments using AI, and is inconsistent with the legislative intent of the Patent Act, which is to encourage industrial development by protecting and supporting inventions. 

Considering that AI is being developed and used in various fields, it is necessary to reconsider the KIPO decision on the Subject Application in order to provide adequate measures to protect inventions invented by AI.  We initiated an administrative litigation against the KIPO’s decision, and will provide updates via Newsletter on new developments as they occur.