Latest Federal Court Cases - August 2022 #2

Schwabe, Williamson & Wyatt PC

Schwabe, Williamson & Wyatt PC


Thaler v. Vidal, Appeal No. 2021-2347 (Fed. Cir. Aug. 5, 2022)

In its only precedential patent decision this week, the Federal Circuit answered a question that had long occupied the musings of law professors, students, and legal theorists everywhere: whether artificial intelligence software can be listed as an inventor on a patent application.  It cannot.

Thaler developed AI systems and, in 2019, sought patent protection for two putative inventions that were developed by one of his AI systems.  He listed his AI system as the sole inventor on both applications.  The Patent Office concluded that both applications lacked a valid inventor and were, hence, incomplete.  It ultimately rejected the application because “a machine does not qualify as an inventor.”

Thaler pursued judicial review under the Administrative Procedures Act.  The district court granted summary judgment to the PTO because an “inventor” under the Patent Act must be an “individual,” which means a natural person.

The Federal Circuit was not at pains to affirm, finding “no ambiguity” in the Patent Act: “The Patent Act expressly provides that inventors are ‘individuals.’”  Although the Patent Act does not define “individual,” the Court relied on a recent Supreme Court case for its holding that, when used “[a]s a noun, ‘individual’ ordinarily means a human being, a person.”  The Court found support in the Dictionary Act, ordinary usage, and multiple dictionaries.  The Court further found that “[n]othing in the Patent Act indicates Congress intended to deviate from the default meaning.”

The Court dismissed Thaler’s arguments that other language in the Patent Act, such as the “manner in which the invention was made” language in Section 103 supported a broader definition of “inventor.”  The Court was unpersuaded, finding these other sections to be irrelevant to the question of inventorship. 

Because the Court found the Patent Act to be “unambiguous,” it held that it had “no need to consider additional tools of statutory construction.”

The opinion can be found here.

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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