Artificial Intelligence And Inventorship Under U.S. Patent Law – Patent – United States – Mondaq
10 August 2022
Stites & Harbison PLLC
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10 August 2022
Stites & Harbison PLLC
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In recent years, the capabilities of, and applications
involving, artificial intelligence (“AI”) have
dramatically increased, so much so that AI systems are now able to
produce works of creativity and ingenuity once thought only to be
possible through human efforts. The U.S. Copyright Office has
already wrestled with the question of whether creative works
authored by AI are eligible for federal copyright protection and
determined that they are not in an opinion letter dated February 14, 2022.
However, the question of whether an invention in which an AI system
is the sole inventive entity can receive patent protection under
U.S. law still remained. The Federal Circuit has now answered this
question in Thaler v. Vidal with an unequivocal
“No, it cannot.”
In this case, Stephen Thaler sought patent protection for two
inventions developed by his Device for the Autonomous Bootstrapping
of Unified Science (“DABUS”) AI system by filing two
patent applications in which DABUS was listed as the sole inventor
with the United States Patent and Trademark Office
(“USPTO”) in July 2019. As an aside, Thaler was also the
claimant of the work generated by an AI system that was denied
registration by the U.S. Copyright Office. Under U.S. patent law,
conception of invention is the hallmark for inventorship. As such,
in conjunction with the filing of a patent application, applicants
are required to submit a sworn oath or declaration from each
inventor identified in the patent application that they, at least
in part, conceived of the claimed subject matter within the patent
application. To satisfy this requirement, Thaler submitted a
statement on DABUS’s behalf, along with a “Statement on
Inventorship” and an assignment conveying the patent
applications to himself. In response, the USPTO concluded that the
two patent applications lacked a valid inventor and were thus
incomplete, resulting in the issuance of a “Notice to File
Missing Parts” for both applications. Failure to cure the
deficiencies outlined within a Notice to File Missing Parts results
in the abandonment of the application for which the notice was
issued. Thaler unsuccessfully petitioned the USPTO’s director
to vacate the issuance of the two notices and subsequently pursued
judicial review of the USPTO’s final denial of his petitions by
the District Court for the Eastern District of Virginia. The
District Court granted the USPTO’s motion for summary judgment
and Thaler appealed to the Federal Circuit.
Although the questions of whether an AI system is capable of
conceptualizing an invention or capable of assigning its interest
in inventive subject matter to another are interesting ones, the
Federal Circuit did not venture to resolve such questions. Rather,
the court only needed to consider whether the definition of
“inventor” set forth in the 2011 Leahy-Smith America
Invents Act (the “Patent Act”) extends so far as to
encompass an AI system. Within the Patent Act a single inventor is
referred to as an “individual” and multiple inventors are
referred to as “individuals.” The court acknowledged that
the Patent Act does not define the term “individual” but
ultimately concluded the term refers to natural persons, i.e.,
human beings. The court based its decision on: (i) prior guidance
by the Supreme Court explaining that the term
“individual” ordinarily means a human being; (ii) prior
Federal Circuit precedent indicating that inventions must be
natural persons and not corporations or sovereigns; (iii)
conventional usage of “individual” as a noun; and (iv)
usage of the term in other sections of the Patent Act. Having
reached the conclusion that inventors must be human beings, the
court thus ruled that the DABUS AI system does not qualify as an
inventor and affirmed the District Court’s summary judgment
ruling against Thaler.
Absent an unlikely review and favorable finding for Thaler by
the Supreme Court or new legislation by Congress to the contrary,
the meaning of “inventor” under the Patent Act will be
limited to human beings, thus precluding patent protection for
inventions derived solely by AI. However, as the ruling in
Thaler was based exclusively upon the interpretation of
the term “inventor,” it does not unequivocally shut the
door for potential patent protection for inventions in which AI
plays a meaningful role. In this regard, the Federal Circuit took
care to specifically note, “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.”
Indeed, a number of patents involving AI-related technologies have
been issued and the USPTO currently has guidance indicating that certain inventions
involving machine learning applications are patent eligible. In any
event, moving forward, those involved in technologies heavily
rooted in AI should nonetheless carefully assess inventorship and
take care to confirm that the inventive subject matter around which
a patent application could be based is not solely attributable to
(i.e., was not entirely “conceived” by) a non-human
entity before considering patent protection. In instances where
conception can only be attributed to an AI system or other
non-human entity, taking measures to preserve the inventive subject
matter as a trade secret may prove to be the more viable path for
protection.
The content of this article is intended to provide a general
guide to the subject matter. Specialist advice should be sought
about your specific circumstances.
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