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2022 Ⓒ Boston Patent Law Association
Volume 53, Issue 4

U.S. Federal Circuit: Artificial Intelligence Machine Is Not An Inventor

By David V. Sanker, Ph.D. and Jianbai Wang, Ph.D., Morgan Lewis
U.S. Court of Appeals for the Federal Circuit affirmed that only a natural person, and not artificial intelligence (AI), can be an inventor. This decision was published on August 5, 2022.
AI technology is widely applied as a tool in different technical areas, such as machine learning, image processing, and speech recognition. More complex AI technology can create new products or processes with little or no human help. If an AI system can independently create something new, can it be designated as an inventor? Dr. Stephen Thaler raised this issue systematically in many jurisdictions, including the United States. The Federal Circuit finally settled this issue—affirming decisions of the United States Patent and Trademark Office (USPTO) and Eastern District of Virginia that an AI system cannot be an inventor.
Dr. Thaler developed an AI system named “DABUS.” DABUS is capable of autonomous invention and “invented” a new type of food container. To test the limits of patent laws with respect to AI inventors, Dr. Thaler filed patent applications for the food container in at least seventeen jurisdictions worldwide, including the United States, Europe, China, Australia, and South Africa. These applications list the sole inventor as, “DABUS, The invention was autonomously generated by an artificial intelligence.” After the USPTO and U.S. District Court for the Eastern District of Virginia held that patent applications must have human inventors and rejected the application, Dr. Thaler appealed to the U.S. Court of Appeals for the Federal Circuit.
US Patent Law Does Not Recognize AI Inventors
The Federal Circuit held that the Patent Act requires an “inventor” to be “a human being” (i.e., “a natural person”). Thaler v. Vidal, No. 21-2347 (Fed. Cir. 2022). The conclusion is based on the “plain text” of the Patent Act. The plain meaning of “inventor” in the Patent Act was previously applied by the Court to conclude that “neither corporations nor sovereigns can be inventors.” Id. The court refused to “stray beyond the plain text” or open up multiple readings of the Patent Act. Id. The Federal Circuit thus affirmed the decisions by the USPTO and U.S. District Court for the Eastern District of Virginia, holding that “only a natural person can be an inventor, so AI cannot be.” Id.
U.S. patent law is directed to inventions made by humans. See, e.g., 35 U.S.C. § 100(f) (“The term “inventor” means the individual or, if a joint invention, the individuals collectively who invented or discovered the subject matter of the invention); 35 U.S.C. § 101 (“Whoever invents or discovers any new and useful process, machine, manufacture, or composition of matter, or any new and useful improvement thereof, may obtain a patent therefor, subject to the conditions and requirements of this title). The USPTO rejected the DABUS patent application in a decision on April 20, 2020. That decision was upheld in district court on September 2, 2021, and the district court’s decision was affirmed by the Federal Circuit on August 5, 2022.
Although current U.S. patent law requires human inventors, this may change in the future. The district court stated:
As technology evolves, there may come a time when artificial intelligence reaches a level of sophistication such that it might satisfy accepted meanings of inventorship. But that time has not yet arrived, and, if it does, it will be up to Congress to decide how, if at all, it wants to expand the scope of patent law.
Thaler v. Hirshfeld, 558 F. Supp. 3d 238 (E.D. Va. 2021).
If Congress chooses to expand the scope of patent laws, the updated law would need to (1) address assignments and declarations, such as allowing a human surrogate to sign assignment and declaration documents on behalf of an artificial inventor, and (2) replace “person having ordinary skill in the art [PHOSITA]” with “ordinary skill in the art [OSITA].”
AI Inventors in Other Jurisdictions
In the United Kingdom, the England and Wales High Court held that “a patent can only be granted to a person.” See Thaler v Comptroller, [2020]] EWHC 2412 (Pat). The Federal Court of Australia initially held that under Australia’s Patents Act 1990 (Cth), the DABUS AI inventor could be designated as an inventor with ownership rights vesting in Dr. Thaler as the owner of DABUS. Later, the Federal Court of Australia reversed the first ruling, holding that “[o]nly a natural person can be an inventor.” See Commission of Patents v. Thaler [2022] FCAFC 62 (April 13, 2022). The UK, US, and Australian courts have reached consistent outcomes, although the rationales behind the decisions are slightly different.
South Africa is an outlier. In South Africa, patent applications are examined solely for compliance with formal requirements (e.g., whether the documents filed are legible and capable of reproduction). By giving the artificial inventor the name “DABUS,” the formal requirement of having a name is satisfied. Until there is a judicial decision regarding AI inventors, the current acceptance of an AI inventor carries little weight.
The Federal Circuit denied inventorship rights for artificial intelligence systems based on the plain text of the Patent Act. Courts in the United Kingdom and Australia courts are aligned with the U.S. courts on this issue, and it is reasonably expected that other jurisdictions will reach the same conclusion. Current patent laws would need to be modified before AI systems can be designated as inventors. There may be increased pressure to accommodate AI inventors, but legislative bodies, such as the U.S. Congress, are likely to be slow.