August 16, 2022
The Federal Circuit recently affirmed a decision in the Eastern District of Virginia holding that the Patent Act unambiguously requires an inventor to be a natural person.
As previously discussed in this blog (see Update on DABUS: Can an AI Machine be an Inventor? and Creation vs. Conception: Can an AI Machine be an Inventor?), some AI researchers believe that the output of certain AI software can represent a new invention conceived of, not by the author, user, or trainer of the software, but by the software itself, and that the software or the “AI machine” should be listed as the inventor on a patent application for the new invention. This AI-machine-as-inventor proposition was tested by Dr. Stephen Thaler via the filing of patent applications in over a dozen countries for inventions allegedly invented by a neural-network-based AI machine (“DABUS”), and the listing of the inventor as “DABUS” on the patent application.
According to Dr. Thaler, DABUS includes a first neural network with general information from various knowledge domains and a second ‘critic’ neural network that monitors the first neural network for sufficiently novel ideas. Further, Dr. Thaler asserts that DABUS only received training in general knowledge in a field, and not only independently conceived of the claimed invention, but also identified it as novel.
After the USPTO objected to listing DABUS as the inventor in the filed U.S. patent application, on the basis that DABUS is not a natural person, Dr. Thaler filed a complaint against the USPTO in the Eastern District of Virginia (Stephen Thaler v. Andrei Iancu and the USPTO) asking for declarative and injunctive relief that would set aside the USPTO decision.
On September 2, 2021, the district court granted summary judgment in ruling against Thaler, asserting that under the plain language of the Patent Act, an AI machine cannot be an inventor. In particular, echoing the rationale set forth in the USPTO decision, the judge noted that U.S. law consistently refers to an inventor as an “individual,” which various courts have interpreted to mean a “natural person.” Thaler appealed the district court decision to the Federal Circuit.
On August 5, 2022, the Federal Circuit affirmed the district court decision, relying on the plain meaning of various portions of the Patent Act to conclude that the Patent Act unambiguously requires an inventor to be a natural person, i.e., a human being. In particular, the Federal Circuit cites to the use of the word “individual” in 35 U.S.C. §100(f) and §100(g), and the plain meaning of that term to mean a human being. Further, the Federal Circuit notes that the Supreme Court has explained that “…’individual’ ordinarily means a human being, a person…” Mohamad v. Palestinian Auth., 566 U.S. 449, 454 (2012), unless there is “some indication that Congress intended” a different meaning, which is not indicated in the Patent Act.
The Court also noted that the Patent Act requires the inventor to submit an oath or declaration indicating that the inventor “believes himself or herself to be the original inventor…of a claimed invention in the application,” which would require DABUS to form beliefs. In this regard, the Court noted that there is no evidence of record that DABUS could form such beliefs, and that Thaler filed the declaration himself.
Further, the Court dismissed several of Thaler’s arguments as unpersuasive. For example, Thaler argued that the use of the term “whoever” in 35 U.S.C. §§ 101 and 271 implies that a non-person can be an inventor. However, the Court notes that 35 U.S.C. § 101 is “subject to the conditions and requirements of this title,” which include the definition of inventor found in Title 35. Moreover, the Court stated that, even if corporations and non-human inventors can be infringers under 35 U.S.C. § 271, this fact has no bearing on the question of non-human inventorship.
Further, Thaler argued that since 35 U.S.C. § 103 states that “[p]atentability shall not be negated by the manner in which the invention was made,” an invention discovered by routine testing or experimentation (e.g., by an AI machine) can still be nonobvious since a “flash of creative genius” is not required. However, the Court dismissed that argument, noting that the § 103 provision relates to how an invention was made, not who can be an inventor.
While Thaler stated his intention to appeal the Federal Circuit decision, Thaler’s best hope of establishing DABUS as an inventor appears to be a change in U.S. patent law to allow for AI inventorship. Nevertheless, Thaler has certainly drawn attention to this important legal issue, which will need to be addressed by Congress in a comprehensive manner sooner or later.