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Federal Circuit Rules AI Cannot Be Named Inventor on a Patent

Wed Aug 31st, 2022 by  Patents

Artificial intelligence (AI) and machine learning (ML) are some of the most exciting, potentially world-changing innovations being developed today. Given the rapid expansion of AI/ML innovations in virtually all industry sectors, it makes good financial sense for AI developers to apply for patent protection on their innovations. However, some innovators want to take AI patent protection a step further by seeking patents on inventions created by their AI systems, viewing AI inventors as analogous to human inventors. When asked whether an AI system could qualify as an inventor under U.S. patent law, the United States Court of Appeals for the Federal Circuit answered on August 5 with a resounding “no” in Thaler v. Vidal, as our Alabama AI patent attorney explains. 

Thaler’s Applications at the USPTO 

The case began when Stephen Thaler, a scientist and inventor in the AI space, filed two patent applications at the United States Patent and Trademark Office (USPTO) for inventions created by his DABUS AI system. He describes DABUS as “a collection of source code or programming and a software program.” He listed DABUS as the sole inventor on both applications and maintained that he did not contribute at all to the conception of the inventions. To satisfy the legal requirement that inventors submit a sworn declaration when applying for patents, Thaler submitted a statement of inventorship on DABUS’s behalf. The USPTO rejected both applications, finding that they lacked a valid inventor. He then petitioned the Director of the USPTO to vacate the details, which the USPTO denied on the ground that “a machine does not qualify as an inventor.” 

The District Court’s Decision

After exhausting all opportunities for appeal within the USPTO, Thaler pursued judicial review of the USPTO’s decision in the United States District Court for the Eastern District of Virginia. There, the court agreed with the USPTO and denied Thaler’s request to reinstate his applications. The district court held that an “inventor” under the Patent Act must be an “individual,” and the plain meaning of “individual” as used in the statute is a natural person. After losing in the district court, Thaler appealed to the United States Court of Appeals for the Federal Circuit. 

The Federal Circuit Agrees with the District Court and the USPTO 

The sole issue before the Federal Circuit — a court of special appellate jurisdiction to hear patent cases — was whether an AI software system could be considered an “inventor” under the Patent Act. The court’s opinion was surprisingly straightforward. Rather than delving into an abstract discussion on the nature of inventorship, the court focused instead on the plain meaning of the text of the Patent Act. 

The Patent Act states plainly that inventors are “individuals,” defining an “inventor” as “the individual or, if a joint invention, the individuals collectively who invented or discovered the subject matter of the invention.” While the Patent Act does not define the word “individual,” the Supreme Court has held that, when used as a noun, the word “individual” means a human being — in other words, a “person.” The Supreme Court has explained that this definition is in accordance with the way we use the word “individual” in everyday parlance and that the word “individual” in statutes should be interpreted as referring to human beings. 

Thaler’s Arguments

Thaler advanced several arguments as to why the Federal Circuit should construe the term “individual” more broadly to include AI systems. First, he states that the Patent Act also uses the word “whoever” in certain sections (“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…”), which can include non-human entities such as corporations. However, the court held that, regardless of the wording of any other section of the Patent Act, the inventorship provision of the Patent Act requires an inventor to be an “individual.”

Second, Thaler argued that AI systems should qualify as inventors because, otherwise, patentability would depend upon “the manner in which the invention was made” rather than its technical merits. The court was unconvinced by this argument, however. It held that provisions of the Patent Act that relate to how an invention was made do not supersede provisions that specifically address who may be an inventor. 

Finally, Thaler argued that the term “inventor” should be interpreted consistent with the “context in which the language is used and the broader context of the statute as a whole.” In a short rebuttal, the court explained that “we have undertaken precisely this task.” As such, the court held that the Patent Act, even when considered in its entirety, limits inventors to human beings. 

The Federal Circuit’s Ruling

The court’s final ruling was short, stating that “when a statute unambiguously and directly answers the question before us, our analysis does not stray beyond the plain text. Here, Congress has determined that only a natural person can be an inventor, so AI cannot be.” 

Patent Protection for AI Innovations Is Still Available

It should be noted that the Federal Circuit’s ruling in Thaler v. Vidal does not prohibit inventors from obtaining patent protection on AI innovations. Rather, it merely prohibits AI systems from being named inventors on patent applications. The general requirements to obtain a patent on an AI innovation still apply. However, as with all software-based innovations, obtaining patent protection for AI tends to be more difficult than more traditional inventions. Companies seeking patent protection for their AI innovations should consider consulting an Alabama AI patent attorney first to get a better idea of what they can expect at the USPTO

Contact an Alabama AI Patent Attorney for More Information

Obtaining AI patents can be an uphill climb but is not impossible. The best way to maximize your chances of receiving a patent is to speak to let an experienced Alabama AI patent attorney handle your patent prosecution. To get started, please contact an attorney at AdamsIP in either our Birmingham or Huntsville office by calling 251-289-9787 or by using our online contact form.