On Sept. 2, 2021, the U.S. District Court for the Eastern District of Virginia addressed what it called a “core issue”—whether an artificial intelligence (AI) machine can be an “inventor” under the Patent Act. It ruled that the “clear answer” is no.
The Patent Applications
Plaintiff Stephen Thaler, Ph.D., is the owner of a Device for the Autonomous Bootstrapping of Unified Sentience (DABUS), which he claims is an artificial intelligence machine. Thaler listed DABUS as the inventor on two patent applications, one for a light beacon and one for a beverage container, which he filed with the United States Patent and Trademark Office (USPTO). The applications included a document through which DABUS had allegedly assigned all intellectual property rights in the claimed inventions to Thaler.
After its initial review of the applications, the USPTO issued Thaler a “Notice to File Missing Parts” based on his failure to identify proper inventorship. Thaler filed a petition asking the USPTO to vacate its “Notice to File Missing Parts,” but the USPTO dismissed it, explaining that the explicit statutory language was uniquely trained on human beings and that the Federal Circuit had twice held that an inventor could only be a natural person. Thaler filed a request for reconsideration, which the USPTO denied. He then filed a civil action seeking review of the USPTO’s decision.
The District Court’s Decision
After considering the parties’ cross-motions for summary judgment, the district court affirmed the USPTO’s determination that an inventor must be a natural person. Focusing on the language of the statute, the court found that both of the definitions provided by Congress for the terms “inventor” and “joint inventor” within the Patent Act reference an “individual” or “individuals.” Accordingly, the court found that the issue of whether AI can be an “inventor” turns on the plain meaning of the statutory term “individual.”
Looking to the Supreme Court’s interpretation of “individual” in another statute, as well as various dictionary definitions, the court found that “inventor” must mean “natural person.” This was reinforced by the statute’s use of “personal pronouns such as ‘himself or herself’ and the verb ‘believes’ in adjacent terms modifying ‘individual.’”
In addition to the statute’s plain language, the court found that its conclusion was further supported by the Federal Circuit’s consistent holdings that “inventors” meant natural persons. It cited to the Univ. of Utah v. Max-Planck-Gesellschaft case, which held that a state could not be an inventor, and the Beech Aircraft Corp. v. EDO Corp. case, which held that a corporation could not be an inventor. The court reasoned that “[a]lthough these cases did not squarely address the issue raised in this civil action, the unequivocal statements from the Federal Circuit that ‘inventors must be natural persons’” supported the statute’s plain meaning that AI could not be listed as an inventor.
Finally, the court rejected Thaler’s policy arguments, finding that the “Supreme Court and Federal Circuit have explicitly held that policy considerations cannot overcome a statute’s plain language.” The court reasoned that, should there come a time when AI is to be included in the definition of “inventors,” it will “be up to Congress to decide how, if at all, it wants to expand the scope of patent law.”
Thaler has filed for patent protection in multiple countries, listing DABUS as the inventor in each one. While Australia and South Africa have permitted AI systems to qualify as “inventors” in patent applications, the U.K.’s Court of Appeal agreed with the U.S. district court. In a two-to-one opinion, the U.K. court held that an inventor must be a person under U.K. law and dismissed Thaler’s appeal.
As the United States and United Kingdom represent two of the most popular patent forums, these rulings represent a major loss for AI inventions.
Thaler filed an appeal on Sept. 24, 2021, with the Federal Circuit, challenging the district court’s holding. In the meantime, however, both the USPTO and U.K. Court of Appeal suggested possible resolutions for applicants seeking AI protection. In its written decision, the USPTO reasoned that “the use of a machine as a tool by natural person(s) does not generally preclude natural person(s) from qualifying as an inventor or joint inventors if the natural person(s) contributed to the conception of the claimed invention.” Likewise, Lord Justice Birss, writing for the U.K. Court of Appeal, suggested “[t]here is more than a hint in this case of the idea that if only Dr Thaler was not such an obsessive and, instead of calling DABUS the inventor, he named himself and then none of these problems would arise.”
Accordingly, to the extent that they contribute to the conception, applicants would be well advised to name themselves as the inventor when filing for AI patent protection.