Federal Circuit Affirms Patent Inventors Must Be Human, Not AI

Jones Day
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Jones Day

On August 5, 2022, in Thader v. Vidal, the Federal Circuit affirmed that patent inventors must be natural persons, rejecting a technologist's attempt to name an artificial intelligence as the sole inventor on patent applications.

Dr. Stephen Thaler, a technologist, created, owns, and maintains a type of connectionist AI that he calls Device for the Autonomous Bootstrapping of Unified Sentience, or DABUS, that he uses to generate inventions, such as a light beacon that flashes in a new way to attract attention and a beverage container based on fractal geometry. On the patent applications for these inventions, Thaler named DABUS as the sole inventor, claiming that the traditional criteria for inventorship of these ideas were not met by him or any other person, but rather that a person of ordinary skill in the art could take the output from DABUS and reduce the ideas to practice.

The Federal Circuit affirmed early decisions by the district court and the U.S. Patent and Trademark Office, holding once again that patent inventors can only be natural persons. The Patent Act defines inventors as "the individual or … individuals collectively who invented." 35 U.S.C. § 100(f). As a result, whether "individual" could include nonpersons such as an AI was a matter of statutory interpretation, and the analysis was a simple one. Because the Supreme Court has held that an "individual" generally means a human being absent some indication that Congress intended a different meaning, and because the Patent Act offers no such indication, the Federal Circuit held that the statute is unambiguous in restricting inventors to natural persons. Thus, no complicated inquiry into the nature of invention, or the rights of AI, was required.

Most jurisdictions abroad are in agreement. The European Patent Office, the UK Intellectual Property Office, and the China National Intellectual Property Administration all currently hold the opinion that only natural persons can be designated patent inventors. However, South Africa's patent office issued DABUS in 2021 the world's first patent with an AI inventor. The Federal Court of Australia initially held in 2021 that a patent inventor may be an AI, but on appeal in 2022, the same court reversed itself, holding that inventors are limited to natural persons.

The law on AI and patents will continue to develop. The Federal Circuit explicitly left unresolved whether inventions made by human beings with the assistance of AI are eligible for patent protection, perhaps suggesting that humans who "co-invent" with AI may lose the ability to patent such inventions. A deeper question left unresolved is whether AI can form beliefs—necessary to satisfy a required procedural step to patenting, that each inventor to submit a declaration that the individual "believes himself or herself to be the original inventor." 35 U.S.C. § 115(b)(2).

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