End of Line: Supreme Court Deletes AI Inventorship

McCarter & English, LLP

McCarter & English, LLP

The Supreme Court dealt the latest blow in Dr. Stephen Thaler’s continuing quest for recognition of AI inventorship of patents, by denying certiorari in Thaler v. Vidal (No. 22-919). Despite support of Dr. Thaler from numerous amici, including law professors (Lessig et al.), the Brooklyn Law Incubator & Policy Clinic, and Chicago Patent Attorneys, the Supreme Court denial essentially forecloses further court review of AI inventorship in the United States, with the Federal Circuit decision of Thaler v. Vidal, 43 F.4th 1207 (Fed. Cir. 2022), standing as the interpretation of AI inventorship under the Patent Act.

In Thaler, the Federal Circuit held that the Patent Act requires inventors to be natural persons based on unambiguous use of the term “individual” throughout the Patent Act. Despite Dr. Thaler’s arguments related to defining how inventions are made under Section 103 of the Patent Act and public policy concerns around encouragement of innovation by the Patent Act, the Federal Circuit maintained that the Patent Act itself as well as Supreme Court and Federal Circuit precedent clearly establish that an individual for inventorship purposes must be human.

The issue of AI inventorship now reverts to Congress, where there has at least been some interest in examining revisions to the Patent Act, and relatedly the Copyright Act, to address AI inventorship and authorship. Indeed, the chair of the Judiciary Committee’s Intellectual Property Subcommittee, Chris Coons (D-Delaware), and his frequent IP ally Thom Tillis (R-North Carolina) have expressed interest in discussing AI inventorship and copyright authorship issues with the USPTO and the general public. Senators Coons and Tillis jointly authored a letter to USPTO Director Kathi Vidal and Register of Copyrights Shira Perlmutter in October 2022, requesting that the USPTO and the Copyright Office establish a national commission on AI, with the goal of assessing the role of AI in all aspects of innovation in the US economy.

Senators Coons and Tillis instructed the USPTO and the Copyright Office to form such a commission by October 17, 2023, and to prepare a full report to Congress by December 31, 2024. In addition, the USPTO has requested comments from public stakeholders by May 15, 2023, on advances in AI technology and potential guidance on how AI inventorship should be treated.

Though further challenges to AI inventorship and authorship are expected in the interim, the IP community eagerly awaits more pointed guidance from the USPTO and the Copyright Office (and eventually Congress) on how AI inventorship/authorship is to be treated.

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