On September 28, 2022, the Korea Intellectual Property Office ("KIPO") rejected Korean Patent Application No. 2020-7007394, based on the ground that any patent application citing an artificial intelligence (AI) system as an inventor is impermissible.

▶ Background Information and Issue of the Case

Dr. Stephen Thaler (hereinafter, "applicant"), who invented the AI system known as 'Device for the Autonomous Bootstrapping of Unified Sentience' (DABUS), filed a PCT application on September 17, 2019 (International Publication No. WO 2020/079499 A1), while indicating “the invention was autonomously generated by an artificial intelligence" in the inventor section of the application. The specification of the PCT application described two (2) inventions relating to a food container and a device for attracting enhanced attention. In this regard, the applicant emphasized that he did not have any knowledge regarding these inventions, and that DABUS had generated the above inventions. Accordingly, the issue was whether a non-natural person such as an AI system could be recognized as an inventor of a patent application.

▶ KIPO's Rejection

The PCT application entered the Korean national phase on March 12, 2020 with DABUS as the inventor, marking the beginning of the KIPO's review of whether an AI can be admissible as an inventor of a patent application.

In this connection, the KIPO established an advisory committee, thereby collecting various opinions from industry experts and academia, and hosted an international conference with the participation of intellectual property offices from seven countries (Korea, U.S., U.K., China, Europe, Australia, and Canada) to discuss whether or not a patent application naming an AI as an inventor was permissible.

After careful consideration, the KIPO concluded that an AI system could not be recognized as an inventor of a patent application based on the following reasons:

• Article 33(1) of the Korean Patent Act ("KPA") stipulates that a person who makes an invention or their successor shall have the right to obtain a patent thereon under this Act. Under the KPA, therefore, the inventor designated for the purpose of a patent application must be a natural person.

• Because it is reasonable to consider that AI has not yet reached the level of technology where an AI system can independently generate an invention without the involvement of humans, it is premature to acknowledge AI as an inventor of a patent application.

Based on the above conclusion, on May 27, 2021, the KIPO ordered the inventor of the subject application to be amended from DABUS to a natural person, noting that it was a violation of the KPA to state an AI as an inventor of a patent application. Following the applicant's failure to amend the inventorship and address the KIPO's amendment order, the KIPO finally rejected the Korean patent application on September 28, 2022.

▶ Examination Results of Other Countries

The USPTO, EPO, and UK IPO also rejected the respective patent applications in their jurisdictions that named DABUS as the inventor on the ground that the inventor must be a person. In addition, the respective courts of these countries also rendered decisions in favor of the above rejections upon appeal.

In case of Australia, however, the court of the first instance ruled that an inventor recognized under the Australia Patent Act can be an artificial intelligence system or device, although such a non-human inventor can neither be an applicant for a patent nor a patentee. Thereafter, the court of the second instance rendered a unanimous decision overturning the first court judgment, and upheld the Australian Patent Office's decision to reject the patent application naming DABUS as the inventor.

Meanwhile, the Federal Patent Court of Germany rendered a decision that AI-generated inventions are patentable but a natural person has to be named as the inventor of the patent application, while further stating that it is admissible to describe in the inventor section of the application the fact that an AI machine was involved in the invention.

▶ Future Challenges

With development in AI-related technology making great strides, there will be a time when AI itself can determine the topic of an invention and complete that invention without human intervention. In such a case, AI may have to be acknowledged as the inventor of the patent application. To prepare for such a future, it may be necessary to discuss the various issues surrounding AI-generated inventions (for example, to whom the patent right for AI-generated inventions belongs, to what extent will the level of a skilled person be determined in determining inventiveness of AI-generated inventions, and how long should the term of a patent right for AI-generated inventions be recognized).