There’s More to Being an Inventor than Butterscotch Ripple

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Willie Wonka famously said that invention is 93% perspiration, 6% electricity, 4% evaporation, and 2% butterscotch ripple. South Africa and Australia have removed the “perspiration” requirement allowing AI to be named the inventor on a patent. (South African issued Patent No. 2021/03242 earlier this year on an AI invention; and in August 2021, and an Australian Judge ruled in Thaler v. Commissioner of Patents, VID 108 of 2021, that the same AI invention qualified for patent protection).

The EU and the U.S., however, are still insisting on a human inventor — or in terms of Wonka’s definition, some “perspiration.”

The Eastern District of Virginia cemented the human inventor requirement, saying in a September 2 opinion in Thaler v. Hirshfeld (1:20-cv-00903-LMB-TCB) that, “[b]ased on the plain statutory language of the Patent Act and Federal Circuit authority,” an artificial intelligence machine cannot be an inventor.

The Court relied upon the statutory definition of inventor in 35 U.S.C.100(f): “the individual, or if a joint invention, the individuals collectively who invented or discovered the subject matter of the invention.” The Court explained that “Congress’s use of the term ‘individual’ in the Patent Act strengthens the conclusion that an ‘inventor’ must be a natural person.”

The Court found this conclusion buttressed by the Federal Circuit’s consistent holdings that under current patent law “inventors must be natural persons,” citing Univ. of Utah v. Max-Planck-Gesellschaft, 734 F.3d 1315, I323 (Fed. Cir. 2013), and Beech Aircraft Corp. v. Edo Corp., 990 F.2d 1237, 1248 (Fed. Cir. 1993)).

Since patents and patents laws are the creation of humans, the answer to the question of whether artificial intelligence can be the inventor on a patent may vary by jurisdiction. However, aside from the wording of the statute and precedent noted by the District Court, there are problems with executing the oath or declaration (which are only partly solved by the AIA’s creation of the substitute statement), as well as with ownership and assignment that make AI inventorship problematic.

As we celebrate Labor Day in the United States, we note that labor — the “perspiration” — has not yet been removed as an ingredient of Wonka’s definition of invention in the U.S.

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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