IP Law Daily, PATENT NEWS: Can an invention created by Artificial Intelligence be patented? The Supreme Court could soon decide, (Mar 20, 2023)

By Cheryl Beise, J.D.

A new petition for certiorari asks the Court to clarify whether the Patent Act restricts inventorship to human beings.

Stephen Thaler, who was denied patent protection for two inventions allegedly created by Thaler’s artificial intelligence (AI) system known as DABUS, has filed a petition for certiorari asking the Supreme Court to determine whether the Patent Act requires an “inventor” to be a human being. Thaler is seeking review a Federal Circuit decision affirming the USPTO’s rejection of two patent applications filed by Thaler solely because DAUBUS was listed as the inventor.

Background. In 2019, Stephen Thaler filed two applications with the USPTO to obtain patents on two inventions allegedly conceived by a “creativity machine” named “DAUBUS.” DABUS stands for “Device for the Autonomous Bootstrapping of Unified Sentience.” U.S. Patent Application No. 16/524,350 was directed to a “Neural Flame,” or a beacon that emits light in a fractal pattern and U.S. Patent Application No. 16/524,532 was directed to a “Fractal Container,” or food container. The applications listed DABUS as the inventor’s given name and “Invention generated by artificial intelligence” as the inventor’s surname. Thaler also included an assignment of all intellectual property rights from DAUBUS to himself. Thaler signed the document on behalf of DAUBUS. The USPTO rejected both applications because they failed to list a human inventor.

Section 115(a) of the Patent Act requires that an application for a patent “shall include, or be amended to include, the name of the inventor for any invention claimed in the application.” An “inventor” is defined in 35 U.S.C. § 100(a) as “the individual or, if a joint invention, the individuals collectively who invented or discovered the subject matter of the invention.” The statute does not define the term “individual.”

The USPTO refused the patent applications on the ground that an inventor must be a natural person. In a final decision on Thaler’s petition for reconsideration of the rejection for the ’350 application, the Office reiterated the long-held position that that the term “inventor” refers to a natural person. “Therefore, interpreting ‘inventor’ broadly to encompass machines would contradict the plain reading of the patent statutes that refer to persons and individuals,” the decision said.

Thaler appealed the USPTO’s rejections to the federal district court in Arlington, Virginia. Both sides moved for summary judgment. In September 2021, the district court granted the USPTO’s motion and denied Thaler’s motion. The court held that the USPTO correctly concluded that under the plain language of the Patent Act, an inventor must be a natural person, a human being. The court declined to consider Thaler’s policy arguments for broadening the statute.

Thaler appealed the district court’s judgment to the Federal Circuit. On August 5, 2022, the Federal Circuit affirmed the district court’s summary judgment ruling. The Federal Circuit also concluded, based on the plain language of the Patent Act, that only a natural person can be an inventor. Nothing in the Patent Act indicated that Congress intended to deviate from this “default meaning.” The Federal Circuit denied Thaler’s petition for panel rehearing and rehearing en banc.

Foreign patent office applications. Thaler attempted to persuade the Federal Circuit to adopt a broader reading of inventorship by pointing out the South Africa in 2021 had issued a patent designating Thaler’s DAUBUS system as the inventor of food container invention. The court, however, was not moved, observing that “[t]his foreign patent office was not interpreting our Patent Act.” Moreover, South Africa’s patent office, the Companies and Intellectual Property Commission (CIPC), does not conduct substantive examinations; instead, it registers patents that meet certain technical requirements.

It’s worth noting that patent offices in the United Kingdom, the European Union, and Australia have rejected applications Thaler filed on behalf of DAUBUS. After securing an initial victory in the Federal Court of Australia, remanding the Patent Commissioner’s determination, the full Federal Court of Australia in April 2022 reversed that decision and reinstated the Patent Office rejection. The Australian High Court has declined to review the case, bringing the matter to a close. In the U.K., the Court of Appeal affirmed the UKIPO’s rejection of two DUABUS applications. Thaler’s appeal is pending before the U.S. Supreme Court. On March 2, 2023, the U.K. Supreme Court heard oral arguments (here and here) in Thaler’s appeal. Thaler notes in his petition for certiorari that his related patent applications are still pending or in the process of judicial review in Germany, Brazil, Canada, China, India, Israel, Japan, New Zealand, Republic of Korea, Singapore, Switzerland, and Taiwan.

Thaler’s petition for certiorari. The question presented by Thaler’s petition is a straightforward question of statutory interpretation: “Does the Patent Act categorically restrict the statutory term “inventor” to human beings alone?” According to Thaler, this case is the ideal vehicle to interpret “inventor” and “individual” under the Patent Act.

Thaler argues that by defining the term “inventor” in the Patent Act in functional terms, Congress intended to extend patent protection broadly, to include sufficiently novel and useful inventions. Thaler urges the Court to interpret the undefined term “individual” as drawing a distinction with various types of collective entities. This interpretation supports the constitutional intent to broadly protect inventions under the Patent Act, according to Thaler. By contrast, the Federal Circuit’s narrow interpretation of “inventor” in this case frustrates the purpose of patent law. Moreover, as the Supreme Court recently affirmed in the copyright context, where the terms of a statute are ambiguous, the statute “must be construed in light of its basic purpose.” Google LLC v. Oracle Am., Inc., 141 S. Ct. 1183, 1197 (2021).

Thaler contends that because the DABUS AI system conceived of the two inventions subject to the applications autonomously, acting with no inventive contribution from its owner or any other human being, “only DABUS fits the statutory definition of ‘inventor’ under the Patent Act.”

As a matter of policy, Thaler describes the increasing importance of AI-generated inventions across many industries and sectors of the economy. “AI will be integral to many forthcoming technological breakthroughs that are likely to revolutionize global industries,” Thaler states. Thaler argues that denying inventorship to AI technologies will stifle innovation and technical progress in the United States.

As proof of the increasing importance of AI in the innovation process, Thaler points to the USPTO’s recent request for comments regarding whether artificial intelligence should be treated an inventor or joint inventor in patent applications (88 Fed. Reg. 9492, February 14, 2023). Thaler views this request for comments as the USPTO’s attempt to work around the “current jurisprudence” to explore ways to obtain protection for inventions conceived by or along-side AI systems.

It remains to be seen whether the Court will choose to insert itself into the debate over IP rights and artificial intelligence before the USPTO, the Copyright Office, other federal agencies, and Congress have a chance to examine the weighty economic and policy implications currently under consideration.

Attorneys: Ryand Abbott (Brown, Neri, Smith & Kahn, LLP) and Mark S. Davies (Orrick Herrington Sutcliffe LLP) for Stephen L. Thaler.

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