Only Humans, not machines, can be inventors of patents in the US

Thaler claims to own an artificial intelligence “AI” software system named DABUS, which is an acronym for “Device for the Autonomous Bootstrapping of Unified Sentience”.  Thaler further claims that DABUS conceived of two patentable inventions, one for a fractal-shaped beverage container and another for a neural flame.  But, Thaler refused to claim credit as the inventor when the patent applications for the two inventions were filed around the world in 2019.   When the United States Patent and Trademark Office (USPTO) refused to issue patents without a listed human inventor, in 2020 Thaler appealed to the US District Court for the Eastern District of Virginia.  The District Court granted summary judgment in favor of the USPTO, and Thaler then petitioned the Court of Appeals for the Federal Circuit for relief. 

On August 5, 2022, the Federal Circuit held (opinion by Judge Leonard Stark):  “there is no ambiguity, the [US Patent] Act requires that inventors must be natural persons; that is, human beings.”  Thaler v. Vidal, 2021-2347, 2022 WL 3130863 (Fed. Cir. Aug. 5, 2022).  Since Thaler adamantly insisted that he made no inventive contribution to the inventions claimed, that left the two particular US patent applications with no inventor.  Without a named inventor, the USPTO will not issue a patent.

The USPTO maintained that the Patent Act repeatedly refers to inventors as natural persons. For example, 35 U.S.C. § 101 states that “Whoever invents or discovers…”, wherein the term “whoever” suggests a natural person. The USPTO also referred to 35 U.S.C. § 115, which uses terms such as “himself”, “herself”, “individual”, and “person”.

The Federal Circuit agreed that the USPTO’s reading of the Patent Act is unambiguously correct.  Therefore, the Federal Circuit need not consider “metaphysical matters” about “the nature of invention or rights, if any, of AI systems.” The Patent Act’s repeated references to “individuals,” which ordinarily means “human beings,” short of “some indication Congress intended” an alternate meaning, supports this interpretation, said the court. Similarly, the use of personal pronouns and the requirement of an oath or declaration from the inventor, indicates that the inventor must be a human capable of forming beliefs. The Federal Circuit explained:

“While we do not decide whether an AI system can form beliefs, nothing in our record shows that one can, as reflected in the fact that Thaler submitted the requisite statements himself, purportedly on DABUS’ behalf.”

The word “individual” is important for US Patent Law, because the US Patent Act was amended in 2011 to expressly require that inventors be “individuals.” 35 U.S.C. § 100(f) as amended states:  “the term ‘inventor’ means the individual or, if a joint invention, the individuals collectively who invented or discovered the subject matter of the invention”.

So far, no major patent office around the world has recognized an AI system as an “inventor”.   The Federal Circuit places the US on consistent footing on this issue.

While the Federal Circuit’s decision in Thaler holds that an AI cannot be a named inventor, such decision does not preclude issuing patents where AI was used in connection with the research.  Under existing and well-established law, when human researchers make inventive contributions to the inventions claimed in a patent application, they can be named as inventors.  If a researcher is the sole human making an inventive contribution, then that researcher can be named as the sole inventor. After the Thaler decision, a US patent cannot be invalidated on the basis of improper inventorship where an AI system assisted one or more humans during research that lead to the invention but that AI system was not also named as a co-inventor on the patent application.  There should be no hesitation to continue to use modern tools of research and development, including software and AI-assistance, to make new inventions and discoveries.

Congress could amend the US Patent Act to redefine “individual” to include an AI system.  As of today, I doubt there is sufficient interest or need for Congress to head down that path.  But before future implementations of AI systems make it more difficult to identify a human participant in an important invention or discovery, amending the US Patent Act could address any imbalance.