Only humans can invent, says judge in first US AI patent decision
Only a human being can be legally listed on a patent as an inventor, according to a Virginia federal judge who delivered the first US ruling in the worldwide debate on the patentability of AI inventions.
Judge Leonie Brinkema at the US District Court for the Eastern District of Virginia handed down the decision on Thursday, September, 2, holding that US law requires that an “individual” take an oath that he or she is the inventor on a patent application and that the legal definition of an individual is a natural person, ie, a human being.
The ruling struck down the efforts of physicist Stephen Thaler who attempted to list the AI machine, Dabus, as the creator of two designs, a drink holder and a flashing light.
In April 2019, the US Patent and Trademark Office (USPTO) confirmed that an AI can’t be named as an inventor on a patent application. According to the USPTO, the patent statutes preclude the “broad interpretation” that an “inventor” could be construed to cover machines. It stated that granting patents to Thaler’s AI system would “contradict the plain reading of the [US] patent statutes that refer to persons and individuals”.
In August 2020, Stephen Thaler sued the USPTO director in a challenge to the office's rejection of patent applications for inventions created by Dabus.
In the suit, Thaler claimed the USPTO’s position was “anti-IP” and “anti-business”. He added that it put US businesses at an international disadvantage compared to businesses in jurisdictions that will grant patents on AI-generated inventions, and there was a danger that future patent applicants may inaccurately list a person as an inventor.
But Judge Brinkema wrote that Congress defined an individual as a natural person under the America Invents Act (2011) and that Thaler’s policy arguments could not override the overwhelming evidence that Congress intended this definition to apply to a human being.
She affirmed the 2019 USPTO decision, but did, however, note that: “As technology evolves, there may come a time when AI reaches a level of sophistication such that it might satisfy accepted meaning of inventorship. But that time has not arrived, and if it does, it will be up to Congress to decide how, if at all, it wants to expand patent law.”
Background
Dabus was created as part of the Artificial Inventor Project (AIP), which is spearheaded by Ryan Abbott, professor of law and health sciences at the University of Surrey. According to the team behind Dabus, the ban on AI-inventors is out of step with a rapidly changing economy in which machines and AI are becoming more powerful, and more important in driving innovation.
Last month, the Australian Federal Court became the first court to claim that AI can be an inventor.
In a landmark decision, the court overturned an Australian Patent Office’s rejection of an application from Thaler.
Commenting on the US ruling, Abbott told WIPR:"We respectfully disagree with the judgment and plan to appeal it. We believe listing an AI as an inventor is consistent with both the language and purpose of the US Patent Act. This decision would prohibit protection for AI-generated inventions and it diverges from the recent holding of the Federal Court of Australia. This means at present that patent protection is only available for these inventions outside the US."
The Dabus project has also succeeded in securing a patent in South Africa but unlike in the US, UK, or at the European Patent Office, South Africa’s patent office, the Companies and Intellectual Property Commission, does not examine patent applications in a substantive way. Instead, applications are only examined for compliance that the application meets the requirements to be granted a patent.
The Dabus team is also taking its mission to other countries including Canada, Japan, South Korea, the UK and Brazil.
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