On August 5, 2022, the Federal Circuit in Thaler v. Vidal ruled that an artificial intelligence (AI) system cannot be listed as a named inventor on a patent application, affirming the United States Patent and Trademark Office (USPTO) and Eastern District of Virginia rulings. The Federal Circuit concluded that the Patent Act requires an “inventor,” as defined in Section 100(f), to be a “natural person.”
Background
Dr. Stephen Thaler developed an AI system dubbed DABUS (“Device for the Autonomous Bootstrapping of Unified Sentience”). He filed two patent applications at the USPTO, listing DABUS as the sole named inventor on both applications. Thaler maintains that he did not contribute to the conception of either invention and thus should not be listed as an inventor on either application.
Procedural Posture
The USPTO concluded that both applications were incomplete because neither listed a human inventor, and “a machine does not qualify as an inventor.” Thaler sought reconsideration and the USPTO maintained its position. Thaler appealed to the U.S. District Court for the Eastern District of Virginia, which ruled in favor of the USPTO and concluded that an “inventor” under the Patent Act must be an “individual,” a “natural person.” The Federal Circuit then held oral argument in June, 2022.
Federal Circuit Ruling
The Federal Circuit issued a panel decision on August. 5. Its analysis began and ended with the statutory text because there was “no ambiguity: the Patent Act requires that inventors must be natural persons; that is, human beings.” The Circuit first looked to Section 100(f), which defines “inventor” as “the individual … who invented or discovered the subject matter of the invention” (emphasis added). While the Patent Act does not define “individual,” the Circuit relied on a previous U.S. Supreme Court ruling interpreting “individual” to mean “a human being, a person,” albeit in a different statutory context. The Supreme Court ruling relied on the Dictionary Act (1 U.S.C. § 1) to conclude that an “individual” is a human being and that construal can only deviate if there is “some indication Congress intended” a different reading. The Circuit found no such indication in the Patent Act. The Circuit further relied on Section 115(b)(2) of the Act, which uses “personal pronouns – ‘himself’ or ‘herself’ – to refer to an ‘individual.’” Specifically, Section 115(b) requires inventors to submit an oath stating that they “believe[] himself or herself to be the original inventor.” While the Circuit did “not decide whether an AI system can form beliefs, nothing in [the] record shows that one can, as reflected in the fact that Thaler submitted the requisite statements himself, purportedly on DABUS’ behalf.”
The Circuit also found its precedent – “concluding that neither corporations nor sovereigns can be inventors” – supported its holding that named “inventors” are limited to “natural persons” under the Patent Act.
The Circuit rejected Thaler’s arguments based on each of sections 101, 103 and 271 of the Patent Act. Thaler’s constitutional avoidance argument was also rejected as inapplicable in the context. Finally, Thaler’s policy arguments that “inventions generated by AI should be patentable in order to encourage innovation and public disclosure” were found to be “speculative and lack[ing] a basis in the text … and in the record.”
Interestingly, the Circuit explicitly stated that it was not addressing the “question of whether inventions made by human beings with the assistance of AI are eligible for patent protection” (emphasis in original). The decision seemingly leaves open the question of patentability for situations where a human co-invents subject matter with an AI system and there is a human named inventor or where a human inventor invents using AI as a tool. This latter interpretation – AI being used as a mere tool, like an advanced calculator – is unlikely to prevent patentability. Tools have helped inventors create new subject matter since time immemorial. The former read, however, is somewhat consistent with the Federal Court of Australia’s Full Court decision and the Boards of Appeal of the European Patent Office decision – each of which held that although AI systems cannot be named inventors, subject matter invented by an AI system is not precluded from being patentable. So far, South Africa is the only country to allow named AI inventors.
The holding in Thaler v. Vidal may lead to more inventorship challenges in litigation. For example, if AI-invented creations are not patentable, defendants may be more inclined to bring inventorship challenges; they might probe into the extent an AI system was used during the inventive process and argue that an AI system crossed the threshold from being a mere tool used by the inventor to actually inventing the patentable subject matter. This is something to keep in mind at the litigation stage as well as at the research and development stage.
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