At the Intersection of Technology, Law, and Business
August 09, 2022 - Artificial Intelligence

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

Service-Level Agreement Basics

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. 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 USPTO’s denial of his petition 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, 2022 WL 3130863 (Fed. Cir. Aug. 5, 2022) at 10.)

The Case

Thaler 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 “DABUS” (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.