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AI-assisted inventions: Focusing on the similarities and differences in inventorship among IP5

View: 340     Date: 2024-12-10 10:10

AI-assisted inventions: Focusing on the similarities and differences in inventorship among IP5

 

With the increasing involvement of artificial intelligence (AI) in invention creations, the issues involving inventorship have attracted increasing attention. China National Intellectual Property Administration (CNIPA) released “Patent Application Guidelines for artificial intelligence-related inventions (Draft for Comment) ” on December 6, 2024 (hereinafter referred to as the Guidelines), which provide guidance on several hot legal issues including the inventorship. This article combined with the content of the Guidelines on the inventorship, summarized and compared the current relevant provisions of IP5 (China, the United States, Europe, South Korea and Japan).

 

1. Whether an AI system is a qualified inventor

In the current legal framework and examination practice of IP5, the standards for whether an AI system can be named as an inventor are highly uniform, and it is clearly stipulated that the inventor must be a natural person. The specific legal basis, relevant regulations and examination cases are shown in the following table.



The relevant provisions of the Patent Law, the   Implementation Regulations and the Guidelines for Patent Examination

Examination cases

CNIPA

According to the patent   law, an inventor or designer is a person who makes a creative contribution to   the substantive features of the invention, and an AI system cannot be   identified as an "inventor". For details, please refer to Articles   6, 16 and 26 of the Patent Law, Rule 14 of the Implementation   Regulations of the Patent Law, and section 4.1.2 of Chapter 1 of the Guidelines   for Patent Examination.

In DABUS cases, the reexamination   decision based on the basic principles of civil law and the interpretation of   the legislative purpose of the patent inventor system, clearly states that AI   cannot be named as an inventor in   patent administrative proceedings.

USPTO

The United States   patent law describes "inventor" with "Whoever" and   "himself or herself", indicating that the inventing entity is human, artificial intelligence systems and   other non-natural persons cannot be listed as inventors in patent   applications or patents. Specifically related to Article 100, Article 101,   Article 115, Article 116 of the Patent Law, as well as the "Inventorship   Guidance for AI-Assisted Inventions".

In DABUS cases, the   U.S. Court of Appeals for the Federal Circuit held that, in accordance with Law   of legal precedent and with reference to textual, logical, and systematic   interpretation, the term "Individual" for an "inventor"   in 35 U.S.C. 100 means a human being in the biological sense, i.e., a person.

EPO

The inventor must be   a natural person, as stipulated in Articles 60 and 81 of the European Patent   Convention and Rule 19 of the Rules of the European Patent Convention.

In DABUS cases, it   was regarded that the designation of the machine as an inventor did not meet   the requirements of Article 81 and Rule 19 (1) of the European Patent   Convention, because the inventor within the meaning of the Convention must be   a natural person. At the same time,   the "declaration indicating that the applicant has acquired European   patent rights from DABUS" and the "correction of this declaration   to indicate succession of right" do not meet the requirements of   articles 60 (1) and 81 of the European Patent Convention, because the machine   has no legal personality and can neither be an employee of the applicant nor   transfer the rights.

KIPO

"Inventor"   means the "natural person" who makes the invention, and the   relevant legal provisions are Articles 33, 42 and 203 of the Patent Law.

In DABUS cases, it   is clear that only a natural person can be considered a valid inventor.

JPO

The inventor must be   a natural person, pursuant to Articles 29, 36 (1),   184-5 of the Patent Law.

In DABUS cases,   "invention" is defined as the product of human creative activity,   the inventor must be a natural person and does not cover artificial   intelligence systems.

 

2. Conditions for a natural person to be the named inventor of an AI-assisted invention

In terms of the conditions and examples for a natural person to be an eligible inventor of an AI-assisted invention, the current publications of IP5 are shown below.



Whether there are published   guidelines/criteria

Whether there are published guidance   examples

CNIPA

The Patent   Application Guidelines for AI-related   inventions (Draft for Comment) states that a natural person who has made   creative contributions to the substantive features of an invention obtained   with artificial intelligence technology as an auxiliary tool may be the   inventor of a patent application.

None

USPTO

Inventorship Guidance for   AI-Assisted Inventions:

To   be named as an inventor in a patent application, a natural person must make a   significant contribution to the invention. Under the Pannu factors, a person makes a   significant contribution to an invention if they:

(1) contributed to the conception of the invention in some   significant manner;

(2) made   a   contribution to the claimed invention that   is not   significant in quality, when that   contribution is measured   against the dimension of the full invention; and

(3) did   more than merely   explain the well-known concepts and/or the current   state of   the prior art.

Yes

EPO

None

None

KIPO

None

None

JPO

None

None

 

The Guidelines of CNIPA distinguish between AI-assisted inventions and AI-generated inventions: the former are those that use AI technology as an auxiliary tool in the invention process, while the latter are inventions that are generated by AI without a substantive human contribution.

For example, the use of artificial intelligence to identify specific protein binding sites to obtain a new drug compound is an invention assisted by artificial intelligence, and a natural person who has made creative contributions to it can be named as the inventor; And the food container independently designed by artificial intelligence technology belongs to the invention generated by artificial intelligence, in the current legal background, artificial intelligence does not have the identity of inventor.

 

For the circumstances under which a natural person can be the inventor of an invention created with the assistance of AI, Inventorship Guidance for AI-Assisted Inventions of USPTO issued in February 2024 gives a more clear explanation: Although AI systems and other non-natural persons cannot be listed as inventors, the use of an AI system by a natural person(s) does not preclude a natural person from qualifying as an inventor (or joint inventors) if the natural person(s) significantly contributed to the claimed invention, as explained in section IV of the Guidance. Patent applications and patents for AI-assisted inventions must name the natural person(s) who significantly contributed to the invention as the inventor or joint inventors (i.e., meeting the Pannu factors explained in section IV). Additionally, applications and patents must not list any entity that is not a natural person as an inventor or joint inventor, even if an AI system may have been instrumental in the creation of the claimed invention.

In addition, the USPTO has published a number of pro and con examples to make the criteria more operational. For example, if a natural person inputs a design prompt to an AI system for the purpose of generating the object, and the protected invention is the solution that the AI system outputs accordingly, the natural person is not a qualified inventor; If the natural person does not change the output scheme of the artificial intelligence system and only makes conventional material selection to implement the design transformation, he is also not a qualified inventor. On the other hand, if a natural person points out that a particular defect in the output scheme of the AI system, prompts the AI system to provide an alternative design, and then the natural person significantly modify the alternative design through experiments, the natural person is a qualified inventor.

 

At present, EPO, KIPO and JPO have not yet issued specific judgment criteria and judgment methods for natural persons as eligible inventors of AI-assisted inventions.

 

In the process of the deep integration of artificial intelligence and invention, the relevant legal issues such as the identification of inventors have become increasingly complex. Through the summary and comparison of the provisions of IP5 countries, it can be seen that on the point that artificial intelligence cannot be regarded as an eligible inventor, IP5 has reached a consensus, but in terms of the conditions and judgment criteria for natural persons as eligible inventors of AI-assisted inventions, the regulations and practices of different countries have made different progress.