Lee International

The Korean Intellectual Property Office (KIPO) established an Advisory Group for discussing and reviewing the issue of whether AI-generated inventions can be protected under Korean patent law.

With the recent rapid advances in the AI technology, Dr. Stephen Thaler, an AI developer of the United Sates, filed patent applications in 16 countries, including Korea, naming DABUS, an AI system created by Dr. Thaler, as a sole inventor of the patent applications.

Lee International is handling prosecution of a patent application of DABUS in Korea.  For this case, KIPO has issued a notice requiring amendment, which indicated that the application violates the Patent Act as DUBUS, not a natural person, is a named inventor, and the inventorship should be amended to name a natural person.  Specifically, KIPO asserted that a company, corporation, or system, all of which are not a natural person, cannot be a named inventor of a patent application based on the Korean Patent Act and the related court decisions.  However, the Korean Patent Act neither explicitly prescribes that only a natural person can be an inventor nor excludes naming AI as an inventor.  Furthermore, the patent protection for AI-generated inventions complies with the purpose of the Patent Act, which is to encourage, protect and utilize inventions, thereby improving and developing technology, and to contribute the development of industry (Article 1 of the Paten Act).  As such, it would be difficult to predict how KIPO will determine this issue.

Other Patent offices including the USPTO, the UKIPO and the EPO rejected the patent applications with DABUS as a named inventor by determining that only a natural person is recognized as an inventor.  In contrast, the federal court of Australia rendered a first decision recognizing AI as an inventor based on the Australia’s unique Patent Act and a flexible interpretation during an appeal against a final rejection.  In addition, South Africa has recently granted a patent to AI.

As the AI inventorship issue has rapidly emerged as a global issue, there is growing need for a more detailed review, focusing on whether an AI-generated invention should be protected as a patent.  As such, KIPO has established the Advisory Group to discuss issues regarding protection of AI-generated inventions such as whether AI should be recognized as an inventor, who will own an AI-generated invention and how an AI-generated invention can be protected in a more multifaceted manner.  To collect diversified opinions from all social standings, the Advisory Group includes a legislation division, a technology division and an industry division, each division including about 15 AI professionals.

The legislation division is comprised of legal professionals, such as professors, judges and lawyers having considerable knowledge of AI-generated inventions and intends to discuss legal issues such as whether AI should be recognized as an inventor and who will own the patent rights for an AI-generated invention.

The technology division, which is composed of university researchers developing AI, and the industry division, which is composed of experts of the companies commercializing AI, intend to discuss the technology level of AI, technical issues on whether AI can generate an invention on its own and the impact of the protection for the AI-generated invention in our industry.

The KIPO announced that they would collect opinions from various experts of AI-generated inventions by September of 2021 through the Advisory Group and promptly prepare a policy relating to AI-generated inventions based on the collected opinions ahead of other countries.