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Federal Circuit Confirms ‘Inventor’ Must Be Human, Not AI – Patent | #itsecurity | #infosec | #hacking | #aihp


Key Points

  • On August 5, 2022, the Federal Circuit held in Thaler v. Vidal that the term
    “inventor” under the United States Patent Act must be a
    human being.
  • This ruling precludes patent protection for inventions where
    the sole inventor is an AI system.
  • Given the rapidly evolving world of AI, this ruling is likely
    to be the first of many decisions tasked with determining the role
    of AI within the larger universe of intellectual property.

Background

In July 2019, computer scientist Stephen Thaler submitted two
patent applications that named an artificially intelligent (AI)
system as the sole inventor. This particular AI system—Device
for the Autonomous Bootstrapping of Unified Science
(DABUS)—was developed and separately patented by Thaler.
Thaler describes DABUS as a collection of source code or
programming and a software program that is capable of generating
patentable inventions.

In the two patent applications naming DABUS as the sole
inventor, Thaler otherwise attempted to comply with the
inventorship requirements. Thaler submitted a statement on behalf
of DABUS to satisfy the sworn oath or declaration requirement of 35
U.S.C. § 115. Thaler also provided a supplemental
“Statement on Inventorship” to explain how DABUS operates
as a “Creativity Machine,” and filed a document
purporting to assign himself all of DABUS’s rights as an
inventor.

During prosecution, the United States Patent and Trademark
Office (USPTO) concluded that both applications lacked a valid
inventor. Thaler maintained that he did not contribute to the
conception of the claimed inventions, and petitioned the USPTO
director to vacate the notices of an incomplete application for
failing to identify a valid inventor. The USPTO ultimately denied the petitions on the ground that
“a machine does not qualify as an inventor.” See, e.g.,

MPEP § 2109 (explaining the inventorship requirement for
patent applications and noting that “[u]nless a person
contributes to the conception of the invention, he is not an
inventor.”).

Thaler subsequently pursued judicial review of the USPTO’s
final decisions on his petitions, and the Eastern District of
Virginia in Thaler v. Hirshfeld confirmed that an
“inventor” under the Patent Act must be an
“individual,” and the plain meaning of
“individual” as used in the statute is a natural person.
See 35 U.S.C. § 100(f) (defining
“inventor”). As such, the Eastern District of Virginia
held that Thaler’s DABUS AI software system could not be an
“inventor” under the current Patent Act.

Federal Circuit’s Decision and Its Potential Impact

On appeal from the Virginia district court, the Federal Circuit
addressed the limited question of whether an AI software system can
be an “inventor” under the Patent Act. As a routine
dispute of statutory interpretation, the Federal Circuit looked to
the text of the Patent Act and found no ambiguity—inventors
must be human beings.

While the Patent Act expressly provides that
“inventors” are “individuals,” the Act does not
define “individual.” 35 U.S.C. § 100(f) (“The term
‘inventor’ means the individual . . . who
invented or discovered the subject matter of the invention.”)
(emphasis added). Thaler attempted to advocate for a broad
interpretation of “individual” that would include AI
software, pointing to the Patent Act’s use of
“whoever,” which encompasses corporations and other
non-human entities for the purposes of infringement. See 35 U.S.C. § 271 (defining infringement as
whoever without authority makes uses, offers
to sell, or sells any patented invention”) (emphasis added).
Thaler also claimed that protecting inventions generated by AI
would further the policy underlying patent law of encouraging
innovation and public disclosure. But the Federal Circuit
ultimately disagreed with each of Thaler’s arguments, finding
instead that under the plain meaning of the Patent Act
“individuals”—and, thus,
“inventors”—are unambiguously natural persons.

Notably, Thaler’s legal endeavors to name DABUS as an
inventor are not limited to the United States. Thaler has garnered
international spotlight by using his DABUS-generated inventions as
a test case for the interplay between intellectual property law and
the ever-evolving field of AI in jurisdictions all over the world.
As of the Federal Circuit’s decision, Thaler has only acquired
patent protection for a DABUS-devised invention in South Africa; he
has received rejections from the United Kingdom, Australia and the
European Patent Office. Similarly, Thaler has received a rejection from the United States Copyright
Office for an AI-generated artwork, finding that such a piece
failed the “human authorship requirement.”

Not only has Thaler’s quest to define AI’s place in the
world of intellectual property created questions as to inconsistent
protections internationally, it has left questions of what can be
protected—and how—in the United States. The Federal
Circuit’s holding clarifies that AI systems cannot be the sole
inventor for the purposes of patent protection. However, the
holding expressly refrains from addressing “the question of
whether inventions made by human beings with the
assistance of AI are eligible for patent
protection.” This precise delineation of what constitutes
sufficient human contribution to be eligible for patent protection
will likely create significant discussion and legal proceedings in
the near future.

Further uncertainties arising from the Federal Circuit’s
decision include finding a place, if any, for AI and AI-generated
inventions in intellectual property. If the Patent Act subsequently
became inclusive of AI inventors, either through a congressional
amendment or U.S. Supreme Court ruling that reverses the Federal
Circuit’s decision in Thaler or a later case, this
could raise questions about how AI inventions affect the person of
ordinary skill in the art standard. Similarly, there may be a need
for the USPTO or Congress to revisit the scope of undue
experimentation in the context of an AI system that is capable of
effortless iterative calculations, among other questions
fundamental to patent law.

All of these uncertainties suggest that patents are not the best
vehicle to protect AI-generated inventions under the current
regulatory and legal framework in the United States, and other
forms of intellectual property, such as trade secrets, should be
considered. Despite these questions, while the technical,
regulatory and legal challenges surrounding AI continue to develop
and accelerate, the law as it currently stands in the United States
does not permit AI to be a named inventor, and therefore inventions
made purely by AI are not patentable.

The content of this article is intended to provide a general
guide to the subject matter. Specialist advice should be sought
about your specific circumstances.

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