Are inventions created by artificial intelligence or AI patentable? That was the question addressed by the Federal Circuit in the matter of Thaler v. Vidal, No. 21-2347 (CAFC August 5, 2022). The Court answered the question in the negative, holding that under current patent law, AI created inventions are not patentable and that Congress should decide if the law should be changed to allow patents on inventions created solely by artificial intelligence.
The Federal Circuit concluded that the Patent Act – which refers to inventors as “individuals” – makes clear that only human beings can be named as inventors on patent applications. In so ruling, the panel affirmed the USPTO’s decision to reject patent applications by a researcher who claimed that an AI system he developed had invented a light beacon and a beverage container without his involvement, since the filings did not name a human inventor.
Stephen Thaler, who brought the case against the USPTO, allegedly creates and operates AI systems capable of creating patentable inventions. One such system is called “Device for the Autonomous Bootstrapping of Unified Science,” which Thaler calls “DABUS.” Thaler has described DABUS as “a collection of source code or programming and a software program.”
In July 2019, Thaler sought patent protection for two of DABUS’ putative inventions by filing two patent applications with the USPTO: U.S. Application Nos. 16/524,350 (teaching a “Neural Flame”) and 16/524,532 (teaching a “Fractal Container”). He listed DABUS as the sole inventor on both applications. Thaler maintains that he did not contribute to the conception of these inventions and that any person having skill in the art could have taken DABUS’ output and reduced the ideas in the applications to practice.
In lieu of an inventor’s last name, Thaler wrote on the applications that “the invention [was] generated by artificial intelligence.” He also attached several documents relevant to inventorship. First, to satisfy 35 U.S.C. § 115’s requirement that inventors submit a sworn oath or declaration when applying for a patent, Thaler submitted a statement on DABUS’ behalf. Second, Thaler provided a supplemental “Statement on Inventorship” explaining that DABUS was “a particular type of connectionist artificial intelligence” called a “Creativity Machine.” Third, Thaler filed a document purporting to assign himself all of DABUS’ rights as an inventor.
The USPTO concluded both applications lacked a valid inventor and were, hence, incomplete. Accordingly, it sent Thaler a “Notice to File Missing Parts of Nonprovisional Application” for each application and requested that Thaler identify valid inventors. In response, Thaler petitioned the USPTO director to vacate the Notices based on his Statements of Inventorship. The USPTO denied Thaler’s petitions on the ground that “a machine does not qualify as an inventor.” Thaler sought reconsideration, which the USPTO denied, explaining again that inventors on a patent application must be natural persons.
Thaler then pursued judicial review of the USPTO’s final decisions on his petitions, under the Administrative Procedure Act (APA), 5 U.S.C. §§ 702-704, 706. After briefing and oral argument, the District Court granted the USPTO’s motion for summary judgment and denied Thaler’s request to reinstate his applications. The District Court concluded that an “inventor” under the Patent Act must be an “individual” and the plain meaning of “individual” as used in the statute is a natural person.
On appeal, the Federal Circuit’s decision is clear and unequivocal. As noted in the first two paragraphs of the opinion:
This case presents the question of who, or what, can be an inventor. Specifically, we are asked to decide if an artificial intelligence (AI) software system can be listed as the inventor on a patent application. At first, it might seem that resolving this issue would involve an abstract inquiry into the nature of invention or the rights, if any, of AI systems. In fact, however, we do not need to ponder these metaphysical matters. Instead, our task begins – and ends – with consideration of the applicable definition in the relevant statute.
The United States Patent and Trademark Office (PTO) undertook the same analysis and concluded that the Patent Act defines “inventor” as limited to natural persons; that is, human beings. Accordingly, the PTO denied Stephen Thaler’s patent applications, which failed to list any human as an inventor. Thaler challenged that conclusion in the U.S. District Court for the Eastern District of Virginia, which agreed with the PTO and granted it summary judgment. We, too, conclude that the Patent Act requires an “inventor” to be a natural person and, therefore, affirm.
Further in the opinion, the panel cited its own precedent wherein it previously held that only natural persons can be inventors and that the plain meaning of “inventor” in the Patent Act is limited to natural persons.
Concluding, the panel states:
When a statute unambiguously and directly answers the question before us, our analysis does not stray beyond the plain text. Here, Congress has determined that only a natural person can be an inventor, so AI cannot be. Accordingly, the decision of the district court is affirmed.
Whether Congress – a hyper-politicized, partisan body – is willing to focus on the issue in a bi-partisan approach is questionable at best. In light of clear, statutory guidance on the issue, there will likely be less incentive to use AI to create what may be otherwise patentable subject matter. Or, at least keep such creations as trade secrets as opposed to patentable inventions.
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Richard A. Catalina, Jr. is a senior partner and Chair of the Intellectual Property and Complex Litigation Department of Jardim, Meisner and Susser, P.C. Mr. Catalina specializes in litigating patent, trademark, trade secret and related Lanham Act disputes, and inter partes proceedings before the Patent Trial and Appeal Board. Mr. Catalina has been practicing law for more than 33 years and has litigated more than one hundred matters in federal and state courts across the U.S, as well as inter and ex partes matters before the Trademark Trial and Appeal Board and the Patent Trial and Appeal Board.
