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US PTO follows EPO and UK IPO in Rejecting Applications with AI Inventor

30 April 2020

We previously reported that the EPO had issued decisions refusing two applications that attempted to name a computer system (“DABUS”) as the sole inventor. The US PTO has now issued a similar decision rejecting what appears to be the US application corresponding to EP18275174. Again, the application was rejected for failure to comply with the formal requirements regarding the naming of the inventor.

The US PTO has long had much stricter and more substantial requirements regarding inventors than other patent offices; it is not so long ago that US applications could only be filed in the name of the inventors and could only be transferred to non-natural persons after filing. Unsurprisingly, the DABUS application was rejected for failure to comply with a number of these requirements, in particular the “naming of an inventor” under 35 U.S.C. s. 115(a). The decision draws analogies with previous US cases in which states and corporations were held not to be entitled to be named as inventors and states that “U.S. patent law does not permit a machine to be named as the inventor in a patent application.”

Although not specifically decided, the US PTO decision also highlights the potential anomaly in the applicant’s accepted position that a machine cannot hold property and the fact that a purported assignment document was filed in which the applicant had signed both on behalf of the machine (as assignor) and himself (as assignee). This suggests that, even if a machine could be considered as an “inventor” according to US law, it would not be entitled to any rights in its inventions (nor would it have the legal capacity to transfer such rights to other persons).

The US now joins the EPO and the UK IPO (decision here) in refusing applications for these inventions due to failure to comply with the formalities regarding the designation of a (human) inventor. However, there are many related applications around the world and so there will undoubtedly be further decisions to come.

Technically, the applicant now has a further 2 months in which to address the formal deficiencies in relation to the inventor and allow the application to proceed. However, given the history of these cases, it seems unlikely that he will do so.

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