“That non-humans may infringe patents does not tell us anything about whether non-humans may also be inventors of patents.”- CAFC
The U.S. Court of Appeals for the Federal Circuit (CAFC) ruled today in Thaler v. Vidal that an artificial intelligence (AI) machine does not qualify as an inventor under the Patent Act. The decision is the latest in a series of rulings around the world considering the topic, most of which have found similarly. Judge Stark authored the opinion.
In May of 2020, the United States Patent and Trademark Office (USPTO) denied U.S. Patent Application No. 16/524,350 (the ‘350 Application), titled “Devices and Methods for Attracting Enhanced Attention”, for failure to “identify each inventor by his or her legal name” on the Application Data Sheet (ADS). The ADS listed a single inventor with the given name DABUS and the family name “Invention generated by artificial intelligence.” DABUS stands for “Device for the Autonomous Bootstrapping of Unified Sentience”. The Application listed Stephen L. Thaler as the Assignee, Applicant and the Legal Representative. The U.S. District Court for the Eastern District of Virginia subsequently granted summary judgment to the USPTO.
The USPTO noted in its decision 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 CAFC agreed that the USPTO’s reading of the statute is unambiguously correct and that the court therefore need not consider “metaphysical matters” about “the nature of invention or rights, if any, of AI systems.” The statute’s repeated references to “individuals,” which ordinarily means “human being,” 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 CAFC 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.
Thaler’s attempt to argue that the word “whoever” in 35 U.S.C. §§ 101 and 271 includes references to corporations as potential infringers, and thus must contemplate non-human inventors, falls flat, said the court. “That non-humans may infringe patents does not tell us anything about whether non-humans may also be inventors of patents,” said the CAFC. “The question before us inevitably leads back to the Patent Act’s definition of ‘inventor,’ which uses the word ‘individual’ – and does not use ‘whoever.’”
Thaler also argued that AI software programs must qualify as inventors because “otherwise patentability would depend on ‘the manner in which the invention was made,’ in contravention of 35 U.S.C. § 103.” But the court said that Section 103 relates to how an invention is made and cannot trump a provision that specifically addresses who can be an inventor.
The Federal Circuit has ruled in cases including Univ. of Utah v. Max-Planck-Gesellschaft zur Forderung der Wissenschaften E.V. and Beech Aircraft Corp. v. EDO Corp. that neither corporations nor sovereigns can be inventors based on the plain meaning of the statute. While statutes are often open to “multiple reasonable readings…. Not so here,” said the court.
Despite Thaler’s arguments that AI must be granted inventorship to encourage future innovation, the CAFC said they must work within the confines of Congress’ words, and in any case, left open the possibility that inventions made by human beings with the assistance of AI may be eligible for patent protection. The court also dismissed Thaler’s concerns about “constitutional avoidance,” in which he claimed that failing to recognize AI as inventors undermines the constitutional goal of promoting “the progress of science and the useful arts.” The CAFC said this provision is merely a grant of legislative power to Congress, and Congress acted in the form of the Patent Act, which is unambiguous in its language about who can be an inventor.
The South African patent office granted the first patent to DABUS in July 2021 under its “formalities examination” and an Australian court said in August 2021 that an AI system can be an inventor under the Australian Patents Act. But the CAFC was not moved by Thaler’s pointing to the South African decision on appeal. “This foreign patent office was not interpreting our Patent Act. Its determination does not alter our conclusion,” wrote the court.
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