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20.04.2023

US Federal Circuit’s Thaler Decision: Can AI Be Named as 'Inventor' on Patent Applications?

On 5 August 2022, US Federal Circuit rendered a decision, analyzing who, or what” may be admitted as an inventor under United States Patent Act. In the light of the increasing significance of Artificial Intelligence ("AI") technology in our era, this precedent seems to be the first example of many others. The core issue to be discussed in the case was whether an AI system could be submitted as the “sole inventor” in a patent application.

Background

Back in July 2019, the United States Patent and Trademark Office (“USPTO”), received two applications submitted by Stephen Thaler, a computer scientist. In both of these submissions, Thaler appointed – by his words– a collection of source code or programming and a software program that is capable of generating patentable inventions, namely “Device for the Autonomous Bootstrapping of Unified Science, a.k.a. DABUS, as the sole inventor of the product. 

However, even from the beginning, there were certain missing aspects due to the nature of the AI and the Law. For instance, according to the Title 35 of the United States Code (USC) §115, “…each individual who is the inventor or a joint inventor of a claimed invention in an application for patent shall execute an oath or declaration in connection with the application”. Since DABUS is a machine, it was not able to fulfill this requirement; therefore, Thaler proceeded on its behalf. Then, he presented a supplemental, which puts forth that DABUS is a “particular type of connectionist artificial intelligence”, a so-called creativity machine. Lastly, Thaler submitted the Office with a document in which he assigns himself as the possessor of all rights arising from the inventorship of DABUS.

In response to these applications, USPTO referred to both of the files as incomplete and issued a Notice to File Missing Parts of Nonprovisional Application to Thaler, determining that they lack a valid inventor. Office required Thaler to provide a valid inventor for the applications to be admitted. Thaler then petitioned the USPTO director regarding the Notice, which was denied. The refusal was justified on the grounds that “a machine does not qualify as an inventor.”

Thaler filed an appeal with the Virginia District Court to assert his rights under the Administrative Procedure Act of United States. The Court rendered an award that favors the USTPO, stating “an inventor must be a human-being”. In result of this decision, Thaler appealed the case to the Federal Circuit.

Judicial Evaluation

The court examined the meaning of the wording, used in the Code. The Title 35 of the USC states that under its §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.”. In accordance with the provisions of this precedent, it was necessary to determine the appropriate meaning of the term "individual."

Circuit considered the daily use of the word, alongside with its definition under dictionaries, such as Oxford English Dictionary and Dictionary.com. Likewise, it was stated that, in daily language, we use the word “individual” for a human being.

Court further demonstrated that in one of their earlier precedent (Univ. of Utah v. Max-Planck-Gesellschaft zur Forderung der Wissenschaften), it was ruled that the inventor shall be a human being, despite the fact that the question being considered in that particular case was whether an inventor can be a corporation.

Conclusion

AI is widely regarded as a technology, that shapes our future; therefore, this case is not only a landmark in the USA, but the whole world. It has been considered a larger number of “products” created by AI technologies more frequently. It will be interesting to observe whether these products are classified as “intellectual property” as a consequence of future legal revisions. This case shows that even though the technology is becoming better and better at managing AI, there are still many legal issues that need to be clarified. Considering the rapid technological change, it is understandable to not have well-prepared or clear legal frameworks. It is therefore crucial to follow the evolution of regulations surrounding legal discussions.