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An invalidation disposition of a patent application shows that ‘artificial intelligence (AI) cannot be inventor’.(News Letter No. 491)

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KH

Post Date 

2022-11-01

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1. An invalidation disposition of a patent application shows that ‘artificial intelligence (AI) cannot be inventor.

-KIPO finally decided that a patent application describing AI as an inventor cannot be accepted.

On September 28, 2022, KIPO disposed of invalidity of the patent application claiming that AI invented the invention on the ground that ‘the patent application describing AI, which is not a natural person, as an inventor is not allowed’. Once the invalidity of an application is determined, the corresponding application is regarded as not existing from the beginning. (The international patent application for an AI’s invention entered in the Korean national phase on the May 17, 2021.)

The Korean application was the international patent application in which Stephen Thaler, US AI developer, indicated AI in the name of ‘DABUS (Device for Autonomous Bootstrapping of Unified Sentience)’ as an inventor. This international patent application was filed in 16 countries including the Republic of Korea. The applicant asserted that he has no knowledge relating to the invention and DABUS, which was developed by himself, created two different inventions, such as a food container, etc. after learning general knowledge.

Regarding the corresponding Korean patent application, on February 2022, KIPO sent the notice for an amendment requesting that ‘AI described as an inventor should be amended as a natural person’. However, since the applicant did not respond to the request, KIPO finally determined the patent application as invalid.

The Korean Patent Act and the relevant judicial precedent recognize only a natural person as an inventor. This principle is regulated in the Patent Acts of all of countries including US, England, Germany, etc.

Internationally the major Intellectual Property Offices have drawn the same conclusion and the US and English courts supported this conclusion.

Although on July 2021 the Australian Federal Court of first instance court had accepted AI as an inventor, on April 2022 the Australia Federal Court of second instance unanimously judged that the decision of the Court of first instance had been wrong.

On March 2022 the German Federal Court made a judgement that, although only a natural person should be accepted as an inventor, it is allowed to describe the information of AI when describing the name of the inventor.

On December 2021, KIPO held an international conference where a total of 7 intellectual property offices including USPTO, EPO and China National Intellectual Property Administration (CNIPA), etc. participated.

The participating countries gathered opinions that it has not yet reached to the technology level that AI alone invents, without a human intervention, and when improving the legal systems, an international harmonization is indispensable since disagreements among countries can be a barrier in the AI industrial development.




2. KIPO held an online international application presentation.

-The presentation provided a guide of the international application systems to obtain overseas intellectual property by the types of rights.

On October 20, 2022 KIPO held the online international application presentation for the general public, patent attorneys and companies’ staff in charge of intellectual property (IP).

Since the IP rights, such as patents, trademarks, etc., are able to be exercised only in the countries where those rights are registered (territorial principle), it is very important for a Korean company which prepares for overseas expansion to rapidly secure an overseas IP right.

Under the international application systems, when a single international application is filed, it gives the effect of filing the application in a number of countries. As one of the proactive public administration, this presentation is to provide necessary information to secure an IP right, so that actual help is provided to a patent client who prepares for filing an international application.

The presentation ran for 2 hours and 30 minutes with the following major content: ▲ guidance of the international application system under the Patent Cooperation Treaty (PCT), ▲ guidance of the international trademark application system under the Madrid Agreement, ▲ guidance of the international design application system under the Hague Agreement, ▲ precautions when making an international application, ▲ latest changes in the international application systems, and ▲ questions and answers.

The presentation was conducted in Zoom which is a video meeting program. Those that wanted to participate the presentation applied to the KIPO website (www.kipo.go.kr), and the relevant questions were available at the international application department of KIPO (042-481-5194).



3. KIPO listens to the voices of a company subjected to an intellectual property-based research and development support (IP-R&D).

-SPG, which participated KIPO’s support program, succeeded in localization of core parts.

On October 19, 2022, KIPO visited SPC which is a reducer manufacturer and had a time to listen to the voice of the company.

The commissioner of KIPO checked the performance of KIPO’s IP-R&D strategic support project, discussed the KIPO’s support policy and IP problems, and toured the production facility and product showroom.



At the beginning of R&D, the worldwide IP information is analyzed to ① set the optimal R&D directions to solve a company’s problem(s), ② overcome a foreign barrier IP, and ③ support to occupy in advance a promising IP in a blank area of an IP technology.

With the KIPO’s support program (2020) on technology development directions and IP dispute responsive strategies, SPG developed technology has no conflict concern of a patent dispute and then succeeded in localization of the ‘precision reducer’.

The commissioner of KIPO said, “the secret to overcome the IP barriers with foreign competitive companies and to rapidly localize the robot core parts (precision reducer) is the thorough analysis of IP information…KIPO will support companies’ activities in various ways, not only the technology development but up to the commercialization level, by diverse support programs using IP information.”



4. Get examination on R&D direction from the view of IP

-KIPO has recruited IP examination institutes from October 19, 2022;
-Tax deduction benefits are provided to a small/medium company asking for IP search and analysis.

KIPO announced to recruit the IP examination institutes (hereinafter, referred to as the ‘institute’) specialized in IP search and analysis from October 19, 2022.

235 institutes have been designated since the relevant system was prepared in 2020. The institutes provide the strategies to secure an IP to occupy in advance a promising technology, conduct the prior art searches and the analysis of a competitor’s IP, thereby preventing the double investment of companies, universities and public research institutes and supporting the creation of an excellent IP.

To apply for the institute designation, the requirements of professional manpower by technical field, dedicated space with facilities and equipment, and security system, etc. are to be met. An application for the institute is available at the online system (biz.kista.re.kr/ipams), to be submitted (by November 4, 2022).

KIPO will designate the institute through a deliberation committee after document review and an actual inspection of the institute submitted the applicantion.

A small/medium company can receive a tax deduction benefit (minimum 25%) of an expense involved in IP search and analysis from the institute.
 

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