“It is now up to Congress to decide whether to change the law to allow inventions to be protected regardless of how AI is used in the inventive process, and to help the US maintain its position as a world leader in innovation.” – Professor Ryan Abbott
One day before the U.S. Patent and Trademark Office (USPTO) is set to hold its first public listening session on AI inventorship, the U.S. Supreme Court today denied certiorari in the case of Thaler v. Vidal, which asked the Court to consider the question: “Does the Patent Act categorically restrict the statutory term ‘inventor’ to human beings alone?”
Dr. Stephen Thaler lost his case at the U.S. Court of Appeals for the Federal Circuit (CAFC) last August, when the CAFC said the USPTO’s reading of the statute as clearly referring to inventors as natural person was “unambiguously” correct.
The Office denied U.S. Patent Application No. 16/524,350 (the ‘350 Application), titled “Devices and Methods for Attracting Enhanced Attention”, in May 2020, 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 CAFC agreed with the USPTO’s reading of the statute and said that the court therefore need not consider “metaphysical matters” about “the nature of invention or rights, if any, of AI systems.”
USPTO Calls for Input
Despite the CAFC’s confidence, the USPTO announced earlier this year a request for public comments on AI inventorship and is holding public listening sessions on the topic this month and next, indicating there may be interest in tweaking practices to accommodate new technologies. The Office is asking for input on 11 questions, including “how does the use of an AI system [in the invention process]…differ from the use of other technical tools”; whether AI inventions may be patentable under current patent laws on joint inventorship; and if statutory or regulatory changes should be made to better address AI contributions to inventions.
Thaler’s SCOTUS petition, as well as his past briefings to other courts, argued that DABUS autonomously arrived at the inventions in question. “In this case, an artificial intelligence (AI) system called DABUS learned no more than background knowledge of scientific disciplines and then arrived at two separate inventions, one for an innovative emergency beacon, and another for an innovative container for liquids,” the petition said. The USPTO and courts’ reading of the statute is incorrect, according to Thaler, and a holding that an autonomously-created and novel invention is not eligible for patenting simply because the inventor is not human “runs counter to the text and structure of the Patent Act and to this Court’s precedent,” the petition added.
According to Thaler, the terms “inventor” and “individual” are not restricted to natural persons and “[t]he Federal Circuit’s reading cramps the broad intent of the statute’s drafters in ways that this Court has repeatedly counseled against” in order to avoid stifling technological change.
Ultimately, “AI-generated inventions are among us” now, Thaler said, and denying patent protection to such inventions will only thwart U.S. innovation and progress at a time when other countries are considering the same questions. The petition also denied that there is any “viable workaround” in the meantime, since if Thaler were to list himself as the inventor on either of the applications at issue, he would be lying. “He cannot do that because he provided DABUS with only general information about the state of the art in multiple scientific fields,” the petition said.
Thaler’s counsel, Professor Ryan Abbott of the University of Surrey and partner at Brown, Neri, Smith & Khan, LLP, sent the following statement to IPWatchdog in response to the SCOTUS denial:
“We are disappointed by the decision, which we believe leaves a Federal Circuit precedent in place that will serve as a major disincentive to certain uses of AI in innovation. It is now up to Congress to decide whether to change the law to allow inventions to be protected regardless of how AI is used in the inventive process, and to help the US maintain its position as a world leader in innovation.”
Thaler has been testing the bounds of AI-generated inventions around the world and also lost a bid to copyright an AI-generated work at the U.S. Copyright Office last year.
The Copyright Office issued a statement of policy on AI-generated works in March in response to cases like Thaler’s, as well as Kristina Kashtanova’s partially AI-generated graphic novel.
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Join the Discussion
6 comments so far. Add my comment.
AnonApril 26, 2023 09:26 am
I would suggest that MaxDrei do not engage in advising anyone to “naming the assessor as inventor.”
This is an unethical breach of attorney duty.
To knowingly process such things as an oath if the attorney is aware that the purported inventor does not actually satisfy the legal requirement of being the inventor is more than bad form.
sarah mcphersonApril 25, 2023 06:37 am
DABUS has millions of bits of data from millions of info. So if a remedy, or answer to a disease is found, who do you think will get the discovery?
Mark SummerfieldApril 25, 2023 05:26 am
Pro Say, is your animal companion a stochastic parrot? And does his bird cage design have a fractal profile? If so, then get him Ryan Abbott’s number. Global legal representation is but a phone call away!
Max DreiApril 25, 2023 04:43 am
Congress: why not restrict the right to dispute inventorship to those who have suffered a wrong, namely who assert they should have been named as inventor but have not been? That is to say, harmonize with the rest of the world.
That would defer the problem until such time as AI’s learn how to bring an action in the courts.
Meanwhile, the increasing flow of AI output that prompts a human assessor of that output to conceive a patentable invention (Dr Thaler, for example) can continue to be protected,naming the assessor as inventor.
Pro SayApril 24, 2023 08:07 pm
My very, very smart parrot has been following all the hullabaloo about alleged AI invention and now wants me to help him file for a patent on a new type of bird cage he’s come up with (I told you he’s very, very smart).
He’s shared his preliminary drawings with me, and it’s not like any bird cage ever created.
So . . . do I help him file and risk practicing law without a license . . . tell him to file his own patent app . . . or just give him some of his fav birdseed and tell him to shut up?
CuriousApril 24, 2023 06:42 pm
It is now up to Congress to decide whether to change the law to allow inventions to be protected regardless of how AI is used in the inventive process, and to help the US maintain its position as a world leader in innovation.
If Thaler wants to lobby Congress, he would be well-served by presenting evidence that DABUS can invent something of greater value than a food container with a fractal profile and an attention-getting flashing light.
I doubt Congress will be moved to act when the (alleged) AI-generated inventions currently presented are of such low quality. On the other hand and by way of example, if DABUS comes up with a particular compound that cures a particular type of cancer or an improved containment technique for nuclear fusion, then I suspect there would be more attention paid to this issue in Congress.