South Korea: IP Office’s DABUS Nullification Highlights Stance Towards AI Inventors

In summary

This article delves into recent unfavourable decisions in South Korea from both the patent office and the administrative court, which pertain to a patent application listing an artificial intelligence, named ‘DABUS’, as an inventor. By furnishing a concise legal background, it investigates the prospect of a flexible legal interpretation. Furthermore, the article briefly addresses essential considerations for patent practitioners when filing a patent application involving an AI-generated invention.

Discussion points

• The Artificial Inventor Project
• Provisions and precedents related to inventorship in the Korean Patent Act
• KIPO’s nullification decision based on articles 33(1) and 203(1)(iv) of the Korean Patent Act
• Seoul Administrative Court’s decision additionally based on its alleged current level of AI technology and potential adverse repercussions on future innovations
• Necessity and potential for more flexible interpretation of inventorship
• Viable strategies for filing a patent application involving an AI-generated invention

Referenced in this article

• Articles 2(1), 33(1), 42(1) and 203(1) of the Korean Patent Act
• Supreme Court Case No. 2011Da67705, 67712 (27 December 2012)
• Intellectual Property High Court Case No. 2002Heo4811 (11 July 2003)
• Korean Intellectual Property Office ‘White Paper on Artificial Intelligence (AI) and Intellectual Property’ (March 2022)
• Seoul Administrative Court Case No. 2022GuHap8954 (30 June 2023)
• European Patent Office Legal Board of Appeal Case No. J 0008/ 20 - 3.1.01 (21 December 2021)

Invasion of AI-generated inventions into patent system

Since a patent application was first filed with the European Patent Office (EPO) in 2018 for an invention generated by an artificial intelligence (AI) known as DABUS, patent offices and courts in many countries have rendered their own decisions on whether DABUS can be recognised as an inventor of the patent application. Although designating an inventor might appear to be a mere formality requirement for patent applications, it has sparked complex debates within international patent offices and courts. The core dilemma revolves around the eligibility of non-human entities, such as AI, to warrant protection within the established patent framework.

In South Korea, the Korean Intellectual Property Office (KIPO) and the Seoul Administrative Court have expressed their opinions regarding listing DABUS as the inventor in a patent application. This article provides a brief overview of the Artificial Inventor Project associated with the DABUS application and outlines the determinations by KIPO and the Seoul Administrative Court. Furthermore, it offers pertinent factors for patent practitioners to take into account when filing applications for AI inventions in Korea.

Artificial Inventor Project

This global project is a collaborative endeavour unfolding across numerous countries, with primary objective of establishing that in cases where AI autonomously creates inventions without conventional human inventors, AI systems themselves can be recognised as inventors under the existing patent framework, thereby securing patent protection.^[1]

Dr Stephen L Thaler stands at the forefront of this initiative, having developed a sentient artificial general intelligence named ‘DABUS’, which autonomously generated inventions (Fractal Container and Neural Flame).^[2] Dr Thaler first filed an application designating DABUS as an inventor in Europe and subsequently filed a Patent Cooperation Treaty (PCT) application, then entered the national phase in various countries, including Korea.

The World Intellectual Property Organization (WIPO) officially received the PCT international application designating DABUS as the inventor. In 2020, the international application was published as WO 2020/079499 A1, listing ‘DABUS, The invention was autonomously generated by an artificial intelligence’ as the inventor. In addition, the Companies and Intellectual Property Commission (CIPC) of South Africa became the first patent office to grant a patent for the DABUS application.^[3]

In contrast, courts in Australia and the United States issued conclusive decisions affirming that patent protection cannot be extended to applications that list AI as an inventor. The Legal Board of Appeal of the EPO also ruled that an inventor must be a natural person (a divisional application is now pending). Appeals against adverse decisions in relation to the DABUS applications are ongoing within various jurisdictions, including the UK, Germany and others.

KIPO and the Seoul Administrative Court said ‘No’ to the DABUS application

Provisions and precedents related to inventorship in the Korean Patent Act

Before discussing the progress of the DABUS application in South Korea, it is necessary to provide a brief overview of legal landscape and provisions in Korea concerning the concept of an ‘inventor’. Unlike some jurisdictions, the Korean Patent Act does not explicitly define the term inventor. Instead, article 2(1) of the Korean Patent Act provides a definition for ‘invention’:

Article 2 (Definition) The definitions of the terms used in this Act are as follows:

1. The term “invention” means the highly advanced creation of a technical idea utilizing the laws of nature.

Article 33(1) outlines the criteria for a person who is entitled to a patent:

Article 33 (Persons Entitled to Patent) (1) A person who makes an invention or a successor thereof has a right to a patent under this Act:

Furthermore, articles 42(1) and 203(1) stipulate the manner of designating an inventor as part of the formality requirements for a patent application:

Article 42 (Patent Applications) (1) A person who intends to obtain a patent shall file a patent application stating the following matters with the Commissioner of the Korean Intellectual Property Office:

1. The name and address of the applicant (if the applicant is a corporation, its corporation name and place of business);

. . .

4. The name and address of the inventor

Article 203 (Submission of Documents) (1) An applicant of an international patent application shall submit to the Commissioner of the Korean Intellectual Property Office, the following matters in writing within period for submitting documents in Korea.

1. The name and address of the applicant (if the applicant is a corporation, its corporation name and place of business);

. . .

4. The name and address of the inventor

In the context of inventorship under South Korean case law, the Supreme Court has ruled that an inventor is required to ‘make a substantial contribution to the creation activity of a technical concept’ (Supreme Court Case No. 2011Da67705, 67712, issued on 27 December 2012). Furthermore, the Intellectual Property High Court (IPHC) has held that ‘a person who makes an invention’, as prescribed in article 33(1) of the Patent Act, exclusively pertains to ‘a natural person who was actually engaged in the creation activity’, thereby excluding a corporation from being deemed an inventor (IPHC Case No. 2002Heo4811, issued on 11 July 2003).

KIPO’s nullification decision regarding the DABUS application

On 12 March 2020, Dr Thaler entered the international application into the Korean national phase, listing DABUS as the inventor and himself as the applicant. Upon formality examination, KIPO issued a notice on 18 February 2022, requesting him to replace the inventor with a natural person. In light of the unfulfilled request, KIPO issued a decision of nullification on 28 September 2022.

According to the KIPO’s notice and nullification decision: article 33(1) of the Korean Patent Act stipulates that a right to obtain a patent is vested in a person who makes an invention or their successor, implying that an inventor pertains exclusively to a human being (ie, a natural person); and article 203(1)(iv) of the Korean Patent Act mandates the inclusion of the ‘(full) name and address of the inventor’ in a patent application, and the ‘(full) name’ refers to the name of a natural person, thereby confining inventorship to natural persons alone.

Meanwhile, apart from the examination of the DABUS application, KIPO took proactive measures by establishing and convening an advisory group composed of legal, technological and industrial experts, in August and September 2021. In March 2022, KIPO published the ‘White Paper on Artificial Intelligence (AI) and Intellectual Property’. In this white paper, KIPO conveyed insights and perspectives of the Advisory Group as follows:

Given the current state of AI technology, it is unlikely that AI will have the capability to autonomously make inventions without human intervention in the foreseeable future. Currently, AI functions solely as a tool for making inventions, and thus, is ineligible to be named as inventor. Even in cases of joint inventions involving both AI and humans, it is sufficient to designate only humans as inventors, thus, there is no legal gap within the framework of patent law. Additionally, it is unclear whether patent protection for AI inventions promotes advances in the field of AI, and there is no immediate need for South Korea to be ahead of other countries in legislating to allow inventors other than natural persons.^[4]

Further, KIPO explored the legal requisite for inventorship, highlighting the necessity for AI to possess legal personality, a condition that could be realised through a revision to the Civil Act. Moreover, KIPO emphasised the imperative of ensuring international cohesion, especially considering that major foreign patent offices have yet to acknowledge AI inventors.^[5] The nullification decision regarding the DABUS application can be perceived as an alignment with KIPO’s stance that was outlined in the white paper.

Seoul Administrative Court’s dismissal decision

On 20 December 2022, Dr Thaler filed a complaint against KIPO’s nullification decision. After several exchanges of briefs between Dr Thaler and KIPO, as well as a hearing conducted on 12 May 2023, the Seoul Administrative Court rendered a decision (Case No. 2022GuHap89524) on 30 June 2023, dismissing Dr Thaler’s complaint on the following basis:

Article 33(1) of the Patent Act explicitly defines an inventor as a ‘person,’ i.e., a natural person, who makes an invention. In addition, Article 42(1)(iv) and Article 203(1)(iv) of the Patent Act require ‘the (full) name and address’ of an inventor to be indicated in a patent application. Even in view of the other sub-paragraphs in the same Articles that specify the inclusion of the (corporation) name and place of business for corporate applicants, it is evident that the term ‘inventor’ under the aforesaid provisions pertains exclusively to a natural person with a ‘(full) name’ and an ‘address.’

At the current level of technology, there is no supporting evidence substantiating the emergence of strong AI, which refers to AI capable of autonomous decision-making and actions extending beyond human-developed algorithms or data. Similarly, DABUS does not appear to qualify as strong AI. Specifically, human involvement significantly contributed to DABUS’s learning process. In the instant case, the sentences and graphs generated by DABUS were collected and restructured to comply with the patent specification format by a patent attorney.

According to the definition for an ‘invention’ in Article 2(1) of the Patent Act, the notion of a ‘technical idea’ and ‘creation’ presupposes human mental activities. In addition, active participation in the inventive process bestows the status of an inventor under patent law, and a right to a patent is inherently vested in the inventor (Article 33(1) of the Patent Act, referred to as “inventorism”). Therefore, the status of an inventor should fundamentally presuppose legal capacity.

While there is no rational basis supporting that designating AI as an inventor would encourage a more proactive AI-driven inventive landscape, there are concerns about potential adverse effects on human-driven innovations, potential erosion of human creativity, potential disruption of research-intensive industries, the prospect of liability ambiguity due to the human developers of AI evading accountability in legal disputes involving AI inventions, and the risk of monopoly of strong AI controlled by a few entities such as large companies, employing patent law as a means for safeguarding their interests. Considering the above, it is difficult to conclude that recognizing AI as an inventor would ultimately advance the technological and industrial development of our society.

An appeal against the above dismissal decision was filed on 28 July 2023 and is currently pending before the Seoul High Court.

Exploring a more flexible interpretation than KIPO and Seoul Administrative Court’s decisions

Both KIPO and the Seoul Administrative Court relied primarily on article 33(1) (regarding persons entitled to patent) and article 203(1) (regarding information provided in the document of PCT national phase entry) of the Patent Act to determine that the Patent Act limits inventors to natural persons. Nevertheless, article 33(1) of the Patent Act serves as a substantive provision concerning ownership rights, distinct from the formalities surrounding the designation of an inventor in a patent application document. Specifically, this provision does not provide a definition of inventor that applies to the entire Patent Act. Furthermore, the distinction made in article 203(1) between the ‘(corporation) name’ of a corporate applicant and the ‘(full) name’ of an inventor cannot be a sufficient basis to conclude that an inventor under patent law is limited solely to a natural person.

Furthermore, contrary to the US patent law, which explicitly defines the term inventor as the individual who invented or discovered the subject matter of the invention, the Korean Patent Act does not include a provision defining the term inventor. Consequently, it is unclear whether only humans can be inventors, potentially opening the door for a broader interpretation of inventor through flexible legal interpretation. Even in the past, the Korean Patent Act did not explicitly define whether technology publicly disclosed on the internet qualifies as prior art for determining novelty and an inventive step of an invention. Despite this absence, such publicly disclosed technology has been recognised as prior art through flexible legal interpretation that factors in technological advancements.

In addition, in light of the provision outlining the purpose of the Korean Patent Act, which states, ‘[t]he purpose of this Act is to promote the technological development and to contribute to industrial development by protecting and supporting inventions and promoting the use of inventions’ (article 1 of the Patent Act), the necessity to protect AI inventions for the advancement of the AI industry is evident. The KIPO and the Seoul Administrative Court assert that, due to the current state of technology, it is not possible for AI to invent autonomously ‘without human intervention’, and thus, it is sufficient to designate only humans as inventors. However, instances where AI creates inventions without the participation of a human who meets the traditional criterion set forth by the Supreme Court (ie, making a substantial contribution to the creation activity of a technical concept) appear to already exist in reality.^[6] Furthermore, considering AI’s capacity to generate inventions through neural networks in a manner similar to the human brain, it is difficult to distinguish between the creative processes of humans and AI. Consequently, there seems to be no legal basis to differentiate the conferment of inventorship status for these entities.

Although KIPO and the Seoul Administrative Court have determined that an inventor must possess legal capacity, the determination of ownership concerning the right to obtain a patent does not fall within the purview of the formality examination process at KIPO. Instead, such matters are typically addressed and resolved through negotiations among the involved parties. Moreover, well-established legal procedures for resolving disputes involving unentitled rights holders offer a means to effectively settle any conflicts arising over ownership.

Despite these circumstances, both KIPO and the Seoul Administrative Court have adopted a narrow interpretation of legal provisions and applied a passive approach, resulting in the nullification of the filing of the patent application for AI-generated invention. This has fundamentally hindered any further substantive examination.

The rapid pace of technological advancement often outpaces development of corresponding laws and policies, inevitably leading to gaps and challenges. To mitigate these gaps, how legal interpretations are made must be considered comprehensively. Legal interpretations should be geared towards fostering technological progress while minimising legal gaps, ultimately benefiting human progress. In the future, unpredicted technological breakthroughs are bound to arise, each potentially raising similar legal issues. At this time, an appropriate precedent that permits AI to be designated as an inventor will need to be established, to effectively navigate technological progress while upholding legal stability.

For patent practitioners’ considerations under current KIPO practice

As mentioned above, KIPO takes a firm stance that designating AI as an inventor is not permissible under the current patent law. Thus, if there is an invention created by AI without involvement of a traditional human inventor (ie, a natural person who has substantially contributed to the creation of the technical ideas), filing a patent application with AI as an inventor may not be the optimal course of action at this time. Instead, a more prudent approach would be to file an application naming the owner or developer of AI as an inventor, even though this may not precisely comply with the patent law, which requires that the true inventor be listed.

Nevertheless, it appears that the ruling of the Seoul Administrative Court in the DABUS case has left room for the potential inclusion of both a human and an AI as joint inventors. The court noted that, ‘since only “natural persons” seem to be eligible as inventors under the current Korean patent law, it is reasonable to judge that listing only “AI” as an inventor in the application is not permissible’ (emphasis added).^[7] On the other hand, as suggested in the decision of the EPO’s Legal Board of Appeal,^[8] it may be possible to list a human (eg, the owner of AI) as an inventor in the application, while adding a notation in the specification that the invention was created by AI. Most significantly, in the ongoing appeal for the DABUS application, the Seoul High Court may yield a different stance from KIPO and the Seoul Administrative Court, leading to an ultimate shift in KIPO practices and policies.

Footnotes