IP Law Daily, PATENT NEWS: Supreme Court declines to weigh in on AI inventorship question, (Apr 24, 2023)

By Cheryl Beise, J.D.

Left standing is a Federal Circuit decision holding that the term “inventor,” as used in the Patent Act, can only refer to a human being.

The U.S. Supreme Court has lost no time in rejecting a petition asking whether the Patent Act restricts inventorship to human beings. The petition for certiorari was filed less than six weeks ago by inventor Stephen Thaler, who was denied patent protection for two inventions allegedly created by Thaler’s artificial intelligence (AI) system known as DABUS. The USPTO had waived its right to respond to Thaler’s petition.

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. Thaler sought relief from that determination in a Virginia federal district court. In September 2021, the district court affirmed the USPTO’s decision. Thaler appealed to the Federal Circuit but failed to change the result. Agreeing with the lower court, the Federal Circuit held that an “inventor,” as the term is used in the Patent Act, could only refer to a human being. According to the Federal Circuit, the Patent Act expressly provides that inventors are “individuals.” Although the Act does not define the term “individual,” in other contexts courts have consistently equated the word “individual” with a natural human being. Nothing in the Patent Act indicated that Congress intended to deviate from this “default meaning.”

Thaler’s petition. Thaler’s petition for certiorari had posed a straightforward question of statutory interpretation: “Does the Patent Act categorically restrict the statutory term “inventor” to human beings alone?” Thaler had argued 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 also argued that denying inventorship to AI technologies would stifle innovation and technical progress in the United States.

The High Court may have decided not to take up Thaler’s petition before Congress, the USPTO, other federal agencies, including the Copyright Office and the National Institute of Standards and Technology, have had an opportunity to hash out the potentially thorny policy and economic concerns raised by possible AI inventorship or co-inventorship. In a February 14 Federal Register notice, The USPTO announced that it is seeking public comments on a set of questions related to the use of artificial intelligence in the invention process and whether and to what degree an AI system could or should be treated as an inventor or joint inventor in a patent application. The deadline for comments is May 15, 2023. The request is part of an ongoing series of inquiries by the USPTO into AI in the “innovation ecosystem.”

AI Inventorship abroad. To date, Thaler’s competitive concerns have not materialized. In fact, Thaler has had almost universal bad luck in obtaining patents in other jurisdictions for the same reason as in the United States. In April 2022, the Federal Court of Australia decided that DABUS cannot qualify as the inventor named on a patent under Australian law (Commissioner of Patents v. Thaler, No. [2022] FCAFC 62, April 13, 2022). The court held that the Australian Patents Act 1990 and associated regulations require that a named inventor be a natural person. The Australian High Court declined to review the case, bringing the matter to a close. Similar conclusions were reached by the European Union’s Patent Office (EP 18 275 163 and EP 8 275 174, January 27, 2020), and the United Kingdom’s Intellectual Property Office (Thaler v. Comptroller General of Patents Trade Marks and Designs, July 27, 2021). The U.K. Supreme Court heard Thaler’s case on March 2, 2023; a judgment will be forthcoming.

DABUS, however, was granted a patent in South Africa (for the “fractal container” invention) in June 2021, although that country (unlike the U.S., U.K., E.U., and Australia) lacks a substantive patent examination system. South African patent applications are examined as to compliance with the formal requirements only, meaning that Thaler’s success there should have little impact internationally. His South African patent also is subject to challenge by interested parties.

The case is Dkt. No. 22-919.

Attorneys: Ryand Abbott (Brown, Neri, Smith & Kahn, LLP) and Mark S. Davies (Orrick Herrington Sutcliffe LLP) for Stephen L. Thaler. Elizabeth B. Prelogar, Solicitor General, U.S. Dep’t of Justice, for Katherine K. Vidal.

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