Now more than ever, technology is influencing the way we do business, communicate, move through and around the world, access and manage our homes, receive and administer healthcare, make purchases, secure information, and protect our most valuable property. Morrison Foerster keeps pace with this rapidly evolving landscape across our internationally recognized corporate, finance, intellectual property, and litigation practices. MoFo Tech brings together our insights relating to fields such as blockchain and distributed ledger, cloud and as-a-service technologies, driverless cars, drones, fintech, computer hardware and software, the Internet of Things, semiconductors, and telecommunications. The MoFo Tech blog offers real-time, in-depth analyses of the trends and complex issues shaping the global technology industry.<h2>ABOUT MORRISON FOERSTER</h2>Morrison Foerster is a leading global law firm that transforms complexity into advantage for its clients. Our clients include some of the largest financial institutions, banks, consulting and accounting firms, and Fortune 100, technology, and life sciences companies. Highlighting the firm’s commitment to client service, leadership in market-changing deals and impact litigation, and values-based culture, Morrison Foerster has been repeatedly recognized as one of the top 10 firms on The American Lawyer’s A-List. Year after year, the firm receives significant recognition from Chambers and The Legal 500 across their various guides, including Global, USA, Asia‑Pacific, Europe, UK, Latin America, and FinTech Legal. Our lawyers passionately care about delivering legal excellence while living our values. Morrison Foerster has a long-standing commitment to creating a culture that respects and celebrates differences, while providing an inclusive environment. The firm has achieved Mansfield Certification Plus since 2018 as a result of successfully reaching at least 30 percent women, communities of color, and LGBTQ+ lawyer representation in a notable number of current leadership roles and committees. The firm also has a long history of commitment to the community and society through providing pro bono legal services, including litigating for civil rights and civil liberties, improving public education and fostering the wellbeing of children, advocating for veterans, promoting international human rights, enforcing the right to asylum, and safeguarding the environment.

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Scott Llewellyn’s practice focuses on complex litigation in federal and state courts around the country, with an emphasis on patent and trade secret disputes. Over the past decade, he has worked on some of the most significant, high–profile IP cases involving technology for televisions, smartphones, and self–driving cars, relying on 40 years of experience with computer hardware and software. Scott also has significant experience with business divorce cases before courts and arbitrators, involving a mix of trade secret, patent, tort, and contract claims relating to technology development and implementation.Scott also has successfully tried general commercial arbitration and agency matters, briefed and argued various appeals in federal appellate court, and tried more than 20 cases for the Denver City Attorney’s office, most of them jury trials.Scott also has an active pro bono practice, having worked on a variety of criminal and immigration appeals, and having represented Colorado criminal defense and mental health organizations in high–profile suits against the state of Colorado for violations of the constitutional rights of defendants.At MoFo, Scott serves on the board of the Morrison & Foerster Foundation. In the broader legal community, he serves on the boards of the Colorado Lawyers Committee and Drop in the Bucket (a charity that builds wells and sanitation systems in sub–Saharan Africa).After law school, Scott clerked for the Honorable Clarence A. Brimmer, District of Wyoming, and the Honorable Diarmuid F. O’Scannlain, Ninth Circuit. He was also previously an adjunct professor at the Georgetown University Law Center.

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Scott Llewellyn’s practice involves complex litigation before state and federal courts around the country, with an emphasis on patent and trade secret disputes for high-tech companies, to which he brings more than 35 years of experience with computer hardware and software, in particular relating to the processing and transmission of audio, video, voice, and other types of data. Mr. Llewellyn has also tried commercial arbitration and agency matters; briefed and argued various appeals in federal appellate court; and tried more than 20 cases for the Denver city attorney’s office, most of them jury trials.

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The Federal Circuit made headlines when it affirmed the U.S. District Court for the Eastern District of Virginia’s holding that an artificial intelligence (AI) cannot qualify as an “inventor” under the Patent Act – only (human) “individuals” can. 

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Federal Circuit Agrees with the USPTO on Inventors: Only Human, After All | MoFo Tech

Tessa Schwartz

The Federal Circuit made headlines when it <a href="https://cafc.uscourts.gov/opinions-orders/21-2347.OPINION.8-5-2022_1988142.pdf">affirmed</a> the U.S. District Court for the Eastern District of Virginia’s <a href="https://www.dwt.com/-/media/files/blogs/artificial-intelligence-law-advisor/2021/09/thaler-v-hirshfeld-decision.pdf">holding</a> that an artificial intelligence (AI) cannot qualify as an “inventor” under the Patent Act – only (human) “individuals” can. The patent application at the heart of the case listed a single inventor with the given name “DABUS” and the family name “(Invention generated by artificial intelligence).” The district court had granted the motion for summary judgment of the United States Patent and Trademark Office (USPTO) after the applicant and assignee of the patent application, Stephen Thaler, challenged the <a href="https://www.uspto.gov/sites/default/files/documents/16524350_22apr2020.pdf?utm_campaign=subscriptioncenter&utm_content=&utm_medium=email&utm_name=&utm_source=govdelivery&utm_term=">USPTO’s denial of his petition</a> and requested reconsideration of the Office’s dismissal of his patent application for failure to identify each inventor by his or her legal name. While the Federal Circuit opinion is important, we anticipate the real-life upshot of its holding will be minimal. As the court said, “we are not confronted today with the question of whether inventions made by human beings with the assistance of AI are eligible for patent protection,” and yet that is the question that is most relevant today. (Thaler v. Vidal, 2021-2347, <a href="http://cafc.uscourts.gov/opinions-orders/21-2347.OPINION.8-5-2022_1988142.pdf">2022 WL 3130863</a> (Fed. Cir. Aug. 5, 2022) at 10.)The CaseThaler v. Vidal hinged on a straightforward question of statutory interpretation. Under the Leahy-Smith America Invents Act (AIA), to be accepted, patent applications must include the name of the inventor(s) of the relevant invention along with an oath from such inventor(s) claiming the invention as their own. The AIA in turn defines “inventor” as “the individual or, if a joint invention, the individuals collectively who invented or discovered the subject matter of the invention.” 35 U.S.C. § 100(f) (emphasis added). The AIA does not define “individual.”In the application, Thaler listed only “<a href="https://en.wikipedia.org/wiki/DABUS">DABUS</a>” (Device for the Autonomous Bootstrapping of Unified Sentience) as the inventor, claiming the invention was entirely created by the AI. The issue came down to whether an AI like DABUS could be the “individual … who invented [ ] the subject matter of the invention.”As previewed, the important questions for businesses that use AI to create potentially patentable inventions are not, and likely will not be for some time, whether an AI can be the inventor but instead how much assistance (human) inventors may receive from an AI, and at what stages, before the humans are no longer considered to have conceived the invention and therefore are not the “inventors” – and Thaler v. Vidal provides no guidance with respect to those questions, which remain very much alive. Answering these questions may require refining or even redrawing the line between a true inventor who “contributes to the conception of the invention,” In re Hardee, 223 USPQ 1122, 1123 (Comm’r Pat. 1984)., and a non-inventor who merely has “general knowledge regarding the anticipated [results].” Bd. of Educ. ex rel. Bd. of Trustees of Fla. State Univ. v. Am. Bioscience Inc., 333 F.3d 1330, 1340 (Fed. Cir. 2003). In the latter case, the determination of inventorship may hinge upon the extent to which the AI may be characterized as a tool used by a human, rather than an independent intelligence. Given the exponential rise of use of AI in research and development, it may only be a matter of time before courts are faced with these questions.

Federal Circuit Agrees with the USPTO on Inventors: Only Human, After All

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