Last Week In The Federal Circuit (August 1-5): An (Artificially) Intelligent Decision On Inventorship

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From facial-recognition technology to voice assistants and self-driving cars, artificial intelligence these days is pretty remarkable. But according to our latest case of the week, there’s at least one thing AI can’t do: be listed as an inventor on a patent application.

Case of the week: Thaler v. Vidal, No. 21-2347

Panel: Chief Judge Moore and Judges Taranto and Stark, with Judge Stark writing the opinion

You should read this case if: you have a matter involving whether AI can qualify as an inventor

Our case of the week centers on an AI system called DABUS, which is short for “Device for the Autonomous Bootstrapping of Unified Science.” Stephen Thaler created DABUS to generate patentable inventions. Thaler filed patent applications for two of DABUS’s putative inventions (a “Neural Flame” and a “Fractal Container”). Both applications listed DABUS as the sole inventor.

The Patent and Trademark Office deemed the applications incomplete because they lacked a valid inventor. Thaler then filed suit against the Patent Office in federal district court, seeking judicial review of the Patent Office’s decision under the Administrative Procedure Act. The district court granted summary judgment for the Patent Office, concluding that an “inventor” under the Patent Act must be a natural person.

The Federal Circuit affirmed. Its analysis “beg[an] and end[ed]” with the relevant statutory text. The Patent Act defines an “inventor” 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) (emphases added). Another section, describing the inventor’s oath or declaration that must be submitted with a patent application, consistently refers to the inventor as an “individual.” Id. § 115.

The Court noted that the Patent Act does not define “individual.” But it explained that the term “ordinarily means a human being,” relying on dictionary definitions and a Supreme Court decision interpreting “individual” in another statute. And nothing in the Patent Act suggested that Congress intended to deviate from that “default” meaning. To the contrary, the Patent Act uses “himself” and “herself”—but not “itself”—to refer to an “individual.” Id. § 115(b)(2). Because the Court found the statutory text unambiguous, it saw “no need to consider additional tools of statutory construction” such as agency-deference doctrines.

The Court rejected Thaler’s counter-arguments. For instance, Thaler invoked Section 101 of the Patent Act, which provides that “[w]hoever invents or discovers any new and useful process, machine, manufacture, or composition of matter . . . may obtain a patent therefor.” Id. § 101 (emphasis added). But that provision is followed by a qualification—“subject to the conditions and requirements of this title [the Patent Act]”—and one such condition is the statutory definition of “inventor” as limited to “individuals.”

Thaler also contended that “inventions generated by AI should be patentable in order to encourage innovation and public disclosure.” According to the Court, however, this “policy argument[]” could not overcome the unambiguous statutory text. And it clarified that it was not deciding “whether inventions made by human beings with the assistance of AI are eligible for patent protection.” Further, the Court observed that South Africa’s patent office has granted patents with DABUS listed as an inventor. But that “foreign patent office was not interpreting our Patent Act.”

A final note: this decision was Judge Stark’s first precedential opinion as a full-fledged member of the Federal Circuit. (He wrote a non-precedential trademark decision in June, and he authored a precedential Section 101 eligibility decision in 2016 as a district judge sitting by designation on the Federal Circuit.) The opinion was concise and hewed closely to the statutory text; it will be interesting to see whether that approach continues in his future decisions.

OTHER WEEKLY STATS

Precedential opinions: 2

Non-precedential opinions: 7

Rule 36: 2

Longest pending case from argument:

Shortest (non-Rule 36) pending case from argument:

[View source.]

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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