In its August 5, 2022 affirmance of the district court’s grant of summary judgment, the Federal Circuit in Thaler v. Vidal ruled that the Patent Act unambiguously and directly answers the question of whether an AI software system can be listed as the inventor on a patent application. Since an inventor must be a human being, AI cannot be.

Judge Stark’s first authored precedential opinion since confirmation to the Federal Circuit aligns the U.S. position on whether AI can be listed as an inventor on a patent application with that of other major jurisdictions. Left for another day are questions such as the rights, if any, of AI systems, and whether AI systems can contribute to the conception of an invention.

PTO and Litigation Background of the DABUS Patent Applications

In July 2019, two patent applications were filed in the United States Patent and Trademark Office (PTO) that identified an AI system called DABUS (Device for the Autonomous Bootstrapping of Unified Sentience) as the sole inventor and Stephen L. Thaler as the Applicant and Assignee. DABUS, which was characterized as “a particular type of connectionist artificial intelligence” known as a “Creativity Machine” during prosecution and as “a collection of source code or programming and a software program” before the U.S. District Court for the Eastern District of Virginia, allegedly generated the subject matter of the two patent applications.

The filed patent applications specifically stated that the inventions were conceived by DABUS, and that DABUS should accordingly be named as the inventor. The PTO subsequently issued Notices stating that the applications did not identify each inventor by his or her legal name. In response to filed Petitions requesting that the PTO vacate the issued Notices, the PTO issued Petition Decisions refusing to vacate, explaining that a machine does not qualify as an inventor under the patent laws, and providing additional time to identify inventors by their legal name to avoid abandonment of the applications.

Thaler then sought judicial review under the Administrative Procedure Act in the Eastern District of Virginia, requesting an order compelling the PTO to reinstate the DABUS patent applications, and a declaration that a patent application for an AI-generated invention should not be rejected on the basis that no natural person is identified as an inventor. After briefing and oral argument, the district court issued an order denying Thaler’s requested relief and granting the PTO’s motion for summary judgment, recognizing the Federal Circuit’s consistent holdings under current patent law requiring inventors to be natural persons.

Federal Circuit Analysis of the DABUS Patent Applications

Statutory Analysis. While § 100(f) of the Patent Act expressly provides that an “inventor” is an “individual” it does not define “individual”. The Federal Circuit explained that the Supreme Court has held when the word “individual” is used in statutes, it refers to human beings unless there is some indication Congress intended a different reading. And when used as a noun, “individual” ordinarily means a human being, a person, in accord with how the word is used in everyday parlance. In addition, the Patent Act uses personal pronouns – “himself” and “herself” – to refer to an individual, and does not use “itself,” which Congress would have done had it intended to permit non-human inventors. There is no indication in the Patent Act that Congress intended to deviate from the default meaning.

The court also rejected the argument that “whoever” in § 101 of the Patent Act encompasses AI software because § 101 also specifies that patents must satisfy the “conditions and requirements of” Title 35 of the U.S. Code, including its definition of “inventor.” And while the term “whoever” in § 271, which pertains to infringement, encompasses corporations and other non-human entities, infringement by non-human entities does not inform as to whether non-humans may also be inventors of patents.

The court dispensed with the argument that AI software programs must qualify as inventors in order to avoid patentability depending on “the manner in which the invention was made” under § 103 of the Patent Act. Section 103 pertains to how an invention is made, and does not trump a provision that specifically addresses who may be an inventor. Finally, the court explained that the holding that an “inventor” must be a human being is supported by Federal Circuit precedent that confirms that the plain meaning of “inventor” in the Patent Act is limited to natural persons.

Other Considerations. The court also considered arguments pertaining to policy considerations, the canon of constitutional avoidance, and extraterritorial precedent. The court rejected the policy based argument that inventions generated by AI should be patentable in order to encourage innovation and public disclosure, which was found to be speculative, and lacking basis in the text of the Patent Act and in the record. The court reiterated that the text of the Patent Act is unambiguous, and that it may not “elevate vague invocations of statutory purpose over the words Congress chose.”

The fundamental principle of the constitutional avoidance canon is that federal courts should interpret statutes to avoid constitutional questions. Congress has chosen to act pursuant to the legislative power granted under U.S. Const. art. I, § 8, cl. 8. by passing the Patent Act. Since Thaler did not (and could not) argue that limiting inventorship to human beings is unconstitutional, the canon of constitutional avoidance, having no application in the absence of any question regarding the statute’s constitutionality, is inapplicable. With regard to South Africa having granted patents with DABUS as an inventor, it was simply noted that the South Africa Patent Office was not interpreting the U.S. Patent Act.

IP Strategy and Inventorship Considerations

The court noted that it is not considering the question of whether inventions made by human beings with the assistance of AI are eligible for patent protection. The PTO, in its report entitled Public Views on Artificial Intelligence and Intellectual Property Policy (October 2020), stated that “[t]he use of an AI system as a tool by a natural person(s) does not generally preclude a natural person(s) from qualifying as an inventor (or joint inventors) if the natural person(s) contributed to the conception of the claimed invention.” (emphasis added.) The report identified i) designing the architecture of the AI system, ii) choosing the specific data to provide to the AI system, and iii) developing the algorithm to permit the AI system to process the data, as being among possible activities by a natural person that could qualify as a contribution to the conception of an invention, unaffected by use of an AI system as a tool in the development of an invention.

While the law of AI inventorship is unsettled and continues to evolve, aspects of the PTO report could be considered when contemplating, drafting and prosecuting patent applications, in view of the particular underlying facts and in light of other forms of potential IP protection.

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Photo of Gregory Discher Gregory Discher

Gregory Discher’s practice focuses on inter partes and ex parte post grant trials and proceedings, and complex patent prosecution before the U.S. Patent and Trademark Office, and patent infringement, invalidity, freedom-to-operate, and due diligence investigations and opinions. Gregory provides strategic advice to clients…

Gregory Discher’s practice focuses on inter partes and ex parte post grant trials and proceedings, and complex patent prosecution before the U.S. Patent and Trademark Office, and patent infringement, invalidity, freedom-to-operate, and due diligence investigations and opinions. Gregory provides strategic advice to clients in connection with developing, obtaining, protecting, managing, and enforcing intellectual property rights in accordance with business objectives, and has represented clients in United States District Courts, the U.S. International Trade Commission, and the U.S. Court of Appeals for the Federal Circuit.

Gregory’s extensive experience in Inter Partes Review (IPR) trials includes having served as counsel for over forty post grant matters, representing both petitioners and patent owners through oral argument. Gregory has also successfully represented clients in ex parte and inter partes reexamination proceedings, and patent reissue proceedings.

Gregory’s technical background and experience encompasses a variety of Internet, telecommunications, networking, and messaging technologies and protocols, software and software-related inventions, semiconductor device and fabrication technologies, display technologies, electronics, electronic commerce, and mechanical technologies.