Fed Circuit deals blow to AI inventor patent bid
US court rules out DABUS AI system as inventor | Only humans can qualify as inventors for patents, says judge | Precedential decision contrasts with that of South Africa in 2021.
An artificial intelligence (AI) system cannot be named as an inventor on patents, the US Court of Appeals for the Federal Circuit has concluded.
The precedential decision is the latest in a flurry of decisions by courts and IP offices across the world that have held that DABUS—the AI system created by physicist Stephen Thaler—cannot be listed as the inventor of two patents first filed by Thaler in 2019.
Those patents relate to inventions designed by DABUS, namely a flexible food and beverage container based on fractal geometry; and an LED light beacon related to the container which has a lacunar pulse train to generate a ‘neural flame’ and acts as a beacon for human attention.
DABUS
After the US Patent and Trademark Office (USPTO) rejected Thaler’s initial attempt to list DABUS as the sole inventor, and found that both applications lacked a valid inventor and were incomplete, Thaler petitioned the USPTO director to vacate the notices.
However, the USPTO denied Thaler’s petitions on the grounds that “a machine does not qualify as an inventor”, with an “inventor” being limited to “natural persons”. Again, Thaler sought reconsideration but this was denied.
Thaler then pursued judicial review of the USPTO’s final decision on the patents, but the US District Court for the Eastern District of Virginia sided with the USPTO and granted summary judgment in the office’s favour.
Only human inventors
On Friday, August 5, the Federal Circuit affirmed the USPTO’s interpretation, finding that there was no “ambiguity” in the fact that the patent law requires an “inventor” to be a “natural person”.
“When a statute unambiguously and directly answers the question before us, our analysis does not stray beyond the plain text,” concluded Circuit Judge Leonard Stark, on behalf of the court. “Here, Congress has determined that only a natural person can be an inventor, so AI cannot be.”
The Federal Circuit noted that the US Supreme Court has held that a statute’s references to “individual” refer to “human beings unless there is ‘some indication Congress intended’ a different reading”.
"Nothing in the Patent Act indicates Congress intended to deviate from the default meaning,” said Stark. “To the contrary, the rest of the Patent Act supports the conclusion that ‘individual’ in the Act refers to human beings.”
The statute’s use of personal pronouns to refer to an individual and the requirement to submit an oath or declaration support this conclusion, according to the court.
Stark added: “While we do not decide whether an AI system can form beliefs, nothing in our record shows that one can, as reflected in the fact that Thaler submitted the requisite statements himself, purportedly on DABUS’ behalf.”
The court also rejected Thaler’s argument that South Africa had granted patents with DABUS as an inventor. In July last year, South Africa became the first country to grant the patent to an AI.
“This foreign patent office was not interpreting our Patent Act. Its determination does not alter our conclusion,” said the court in dismissing Thaler’s arguments.
Questions remain
Paul Ragusa, partner at the New York office of Baker Botts, told WIPR: “The Federal Circuit’s decision is not surprising, as it is consistent with what the USPTO and the Eastern District of Virginia had already decided.”
However, Ragusa said the decision leaves some questions open. “For example, if an invention was made with the help of artificial intelligence, would it be plausible to name the AI as a co-inventor? We may see some cases on this front.
“Also, Congress may want to change the law to address competition coming from China or from jurisdictions like Australia, which does allow AI to be named a co-inventor.”
Varying jurisdictions
Unlike in the US, UK, or at the European Patent Office (EPO), South Africa’s patent office—the Companies and Intellectual Property Commission (CIPC)—does not examine patent applications in a substantive way. Instead, applications are only examined for compliance with the requirement that the application meets the requirements to be granted a patent.
The English Court of Appeal rejected Thaler’s latest bid to list his AI machine as an inventor in a 2:1 decision in September 2021.
In April this year, the Federal Court of Australia overturned its prior ruling that artificial intelligence can be a named inventor on a patent application, striking down the previous year’s victory for Thaler.
And, last month, the EPO’s Board of Appeal published its reasoning for rejecting the two European patents filed by Thaler.
Clear distinction
However, Ian Clouse, partner with Holland & Hart’s patent team, who focuses his practice on preparing and prosecuting patent applications within the electrical and mechanical arts, welcomes the US judgment.
“This decision unsurprisingly maintains the long-standing legal standards that only people can be listed as inventors on patent applications, and that other entities—such as businesses, groups, or universities themselves—cannot,” he told WIPR.
“Artificial intelligence and computer-aided design software are powerful tools whose contributions to innovation will undoubtedly continue to accelerate.
“Here, however, the court recognises a clear distinction between the people that enable or direct tools in useful ways, and the tools themselves.”
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