Patent Poetry: Federal Circuit Rules the AI ​​Can’t Invent | AEON Law

AI cannot be an inventor.

Other courts agree.

The Federal Circuit has ruled that only human beings – not an artificial intelligence (AI) can be considered an “inventor” under US patent law.

(We wrote about this issue in 2017, by the way…)

The United States Patent and Trademark Office (USPTO) rejected Stephen Thaler’s patent applications, which listed no human as inventor:

Thaler states that he develops and operates AI systems that generate patentable inventions. One such system is its “Unified Science Autonomous Boot Device”, which Thaler calls “DABUS”. Thaler described DABUS as “a collection of source or programming code and software”.

In July 2019, Thaler sought patent protection for two of DABUS’s putative inventions by filing two patent applications with the PTO: U.S. Application Nos. 16/524,350 (teaching a “neural flame”) and 16/524,532 (teaching a “fractal container”). ). He listed DABUS as the sole inventor on both applications. Thaler argues that he did not contribute to the conception of these inventions and that anyone skilled in the art could have taken DABUS’ output and reduced the ideas in applications to practice.

Instead of an inventor’s last name, Thaler wrote on the applications that “the invention [was] generated by artificial intelligence.

The USPTO concluded that the applications were incomplete in that they lacked a valid inventor. He sent Thaler a “Notice of Filing of Missing Parts of Non-Provisional Application” for each application and asked Thaler to identify valid inventors.

Thaler responded with a petition to rescind notices based on his inventor claims.

The USPTO denied this on the grounds that “a machine does not qualify as an inventor”.

As the court discussed,

This case raises the question of who, or what, can be an inventor. Specifically, we are asked to decide whether an artificial intelligence (AI) software system can be listed as an inventor on a patent application. At first, it might seem that solving this problem would involve an abstract inquiry into the nature of the invention or the rights, if any, of AI systems. In fact, however, we don’t need to think about these metaphysical questions. Instead, our task begins – and ends – with consideration of the applicable definition in the relevant statute.

The court noted that

The Patent Act expressly provides that inventors are “individuals”. Since 2011, with the passage of the Leahy-Smith America Invents Act, the Patent Act has defined an “inventor” as “the individual or, if it is a joint invention, the individuals collectively who have invented or discovered the object of the invention”. … The law defines “co-inventor” and “co-inventor” in the same way as “any of the persons who invented or discovered the object of a joint invention”.

The Patent Act does not define “individual”. However, the United States Supreme Court explained that it “generally refers to a human being, a person.”

The Patent Act also uses personal pronouns – “himself” and “herself” – to refer to a “person”.

The court noted that the patent law also “does not use ‘itself,’ which it would have done if Congress intended to allow non-human inventors.”

Additionally, the Federal Circuit had previously ruled that “inventors must be natural persons and cannot be corporations or sovereigns.”

As Bloomberg Law reports,

The decision matches courts in the European Union, the United Kingdom and Australia which refused to accept Thaler’s argument. Its only currently existing victory comes from a South African court which declared that an AI can be a patent inventor.

Unless the Supreme Court of the United States intervenes, the Federal Circuit is generally the final authority in U.S. patent matters, hearing all such appeals from the federal district courts and the U.S. Patent Office and brands.

Thaler intends to appeal to the Supreme Court, according to his lawyer.


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