Artificial Intelligence Cannot Serve as an Inventor of a Patentable Invention
Friday, September 2, 2022

Last month, the United States Court of Appeals for the Federal Circuit (the “Federal Circuit”) ruled that only human beings may qualify as inventors of patentable inventions. See Thaler v. Vidal, Appeal No. 2021-2347 (Fed. Cir. Aug. 5, 2022). In the case at issue, computer scientist Stephen Thaler developed an artificial intelligence system for which he coined the name “DABUS” (“Device for Autonomous Bootstrapping of Unified Science”), and which is the “creativity machine” named as the sole inventor on patent applications for a food container and a light beacon. Thaler argued that the United States Trademark and Patent Office should recognize AI alongside humans as “individuals” who are eligible inventors of patentable inventions under the Patent Act.

The Federal Circuit ruled against Thaler, explaining that the AI system DABUS does not fit within the definition of the term “individual” as used in the Patent Act because that term refers only to human beings. The Federal Circuit acknowledged that the statutory text of the Patent Act does not expressly define the term “individual,” but was comfortable relying on 2012 Supreme Court precedent that defined the term, stating “when used as a noun, ‘individual’ ordinarily means a human being, a person.” Id. (internal citations omitted). Moreover, the Federal Circuit reasoned that the Patent Act’s use of the pronouns “himself” and “herself” suggest that Congress intended patent inventors to be limited to human beings, because, had Congress intended to extend patent inventorship beyond humans, the term “itself” would be included in the statute to allow for non-human inventors. Id.

While this recent ruling serves to affirm earlier decisions of the United States Patent and Trademark Office and the United States District Court for the Eastern District of Virginia to exclude AI as inventors, public comments from Thaler’s attorneys suggest the fight is not over. Thaler intends to appeal the Federal Circuit’s decision and request that the Supreme Court take up the issue of AI inventorship under the Patent Act. Meanwhile, Thaler has received similar rulings in jurisdictions outside the U.S., such as the European Union, the United Kingdom, and Australia (although a South African court has sided with Thaler and DABUS). Thaler is also suing the U.S. Copyright Office on a similar issue – whether an AI can author copyrighted material under the Copyright Act.


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