Dr. Stephen Thaler filed two patent applications in the United States Patent and Trademark Office (‘USPTO”) directed to inventions generated by an artificial intelligence (“AI”) system that he developed, Device for the Autonomous Bootstrapping of Unified Science (“DABUS”), naming DABUS as the sole inventor in both patent applications. The USPTO deemed the patent applications incomplete for omitting a valid inventor. Thaler then sought judicial review of the USPTO’s decision in the United States District Court for the Eastern District of Virginia, which agreed with the USPTO in finding that an “inventor,” as used in the Patent Act, must be an “individual,” and that “individual” refers to a natural person. Thaler then appealed the district court’s decision in the United States Court of Appeals for the Federal Circuit.
On August 5, 2022, the Federal Circuit affirmed the district court’s decision, finding that an AI system cannot be an “inventor” under the Patent Act. Thaler v. Vidal, Appeal No. 2021-2347 (Fed. Cir. Aug. 5, 2022). In considering the statutory text of the Patent Act, the Federal Circuit ruled that the Patent Act was unambiguous: “the Patent Act requires that inventors must be natural persons; that is, human beings.” Id. As explained by the Federal Circuit, the Patent Act defines an “inventor” as an “individual.” Id. (citing 35 U.S.C. 100(f)). Although the term “individual” is not expressly defined in the Patent Act, the Federal Circuit cited Mohamad v. Palestinian Auth., 566 U.S. 449, 454 (2012), wherein the Supreme Court of the United States opined that, as used in statutes, the term “individual” refers to a human being absent indicia that Congress intended a different reading. In applying Mohamad, the Federal Circuit found that nothing in the Patent Act indicates that Congress intended to deviate from the default meaning, pointing, in support of its finding, to the usage of personal pronouns in the Patent Act and a lack of evidence showing that an AI system can form a belief as necessary to execute an inventor’s oath/declaration.
The Federal Circuit’s decision is aligned with courts in the United Kingdom and Australia on the issue of whether an AI system can be inventor. Thus far, South Africa is the only country to issue a patent for an invention generated by DABUS. Notably, however, in South Africa, patent applications are not substantively examined prior to being issued as a patent, and any third party could petition for revocation of the South African patent on numerous grounds, including that Dr. Thaler was not entitled to apply for it. Accordingly, South Africa’s acceptance of an AI system as an inventor may not carry much weight. It is advisable to continue naming individuals (i.e., human beings) as inventors in patent applications. With that said, stakeholders should continue to monitor for changes in this area as legislatures may face pressure to revamp patent laws so as to include AI within the definition of “inventor.” Indeed, the United States District Court for the Eastern District of Virginia acknowledged that “there may come a time when artificial intelligence reaches a level of sophistication such that it might satisfy accepted meanings of inventorship,” and, if so, “it will be up to Congress to decide how, if at all, it wants to expand the scope of patent law.” Thaler v. Hirshfeld, 558 F. Supp. 3d 238 (E.D. Va. 2021).
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