AI Need Not Apply: Federal Circuit Holds Artificial Intelligence Cannot Be an Inventor

Vinson & Elkins LLP

Vinson & Elkins LLP

On August 5, 2022, in Thaler v. Vidal, No. 21-2347 (Fed. Cir. Aug. 5, 2022), the Federal Circuit held that an artificial intelligence (“AI”) system cannot be listed as an inventor on a United States patent. In rejecting a researcher’s effort to list an AI system he created as an inventor on two patent applications, the court noted that the Patent Act is “unambiguous” that only a natural person can qualify as an inventor.

Stephen Thaler created a “connectivist” intelligence called “Device for the Autonomous Bootstrapping for Unified Science” (“DABUS”). DABUS is an AI system that, according to Thaler, generates its own patentable inventions. In July of 2019, Thaler set out to obtain protection for two of DABUS’ putative inventions by filing two patent applications with the United States Patent and Trademark Office (“PTO”). Because DABUS was listed as sole inventor, the PTO rejected both applications, explaining that “a machine does not qualify as an inventor.” Thaler then sought judicial review of the PTO’s decision in the U.S. District Court for the Eastern District of Virginia, which granted summary judgment in the PTO’s favor.

On appeal, the Federal Circuit held that ordinary statutory interpretation requires that an inventor be a human being. According to the court, there is no ambiguity. Since the passage of the Leahy-Smith America Invents Act in 2011, an “inventor” is defined as “the individual or, if a joint invention, the individuals collectively who invented or discovered the subject matter of the invention.” 35 U.S.C. § 100(f) (emphasis added). “Joint inventors” and “coinventors” are in turn defined as “any 1 of the individuals who invented or discovered the subject matter of a joint invention.” Id. (emphasis added). Finally, the Patent Act refers to “individuals” when describing the statements or declarations required of an inventor. See, e.g., 35 U.S.C. § 115.

The court found Thaler’s arguments insufficient to overcome the clear text of the statute. Thaler pointed to other parts of the Patent Act where non-humans could be actors, but the court explained that those sections “do[] not tell us anything about whether non-humans may also be inventors of patents.” Thaler’s public policy contention — that allowing for patentability of AI-generated inventions will encourage innovation — was similarly unsuccessful. Where the text at issue is unambiguous, the court noted, consideration of statutory purpose is inappropriate.

What This Means for You

The Federal Circuit was careful to note that today’s decision does not reach the question of whether inventions made by human beings with the assistance of AI are eligible for patent protection. And yet, this is an important test case regarding the contributions of AI for different jurisdictions and for different areas of intellectual property. South Africa, for example, has already granted patents to DABUS as sole inventor, but courts and agencies in the European Union, the United Kingdom, and Australia have refused to list AI as an inventor. Thaler has also brought suit against the United States Copyright Office over its refusal to register a copyright to DABUS for lack of a human “author.” That case is currently pending.

DISCLAIMER: Because of the generality of this update, the information provided herein may not be applicable in all situations and should not be acted upon without specific legal advice based on particular situations.

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