Can an artificial intelligence (AI) system be an inventor? Not in the eyes of the Federal Circuit and the United States Patent and Trademark Office (USPTO). 

Stephen Thaler recently submitted two patent applications for which an artificial intelligence system named “DABUS” was listed as the sole inventor. Specifically, the first application was directed to a food or beverage container that facilitates stacking.¹ The second application was directed to a light device including a neural flame that serves as a signal beacon for human detection.² The USPTO denied the patent applications for failing to list any human as an inventor. The Eastern District of Virginia sided with the USPTO and the case was appealed to the Federal Circuit. In a recent decision in Thaler v. Vidal, No. 21-2347 (Fed. Cir. 2022), the Federal Circuit concluded that an artificial intelligence system cannot be a patent inventor under the Patent Act. 

The Federal Circuit acknowledged that to satisfy the inventor oath and declaration requirement of 35 U.S.C. § 115, Stephen Thaler submitted a statement on behalf of the artificial intelligence system along with a supplemental Statement of Inventorship explaining the nature of the artificial intelligence system that Thaler listed as the inventor of the patent applications. In addition, Thaler assigned the inventor rights of the artificial intelligence system to himself.

Rather than contemplate thorny questions surrounding whether AI is sentient, the Federal Circuit viewed the question as one of statutory interpretation. Considering the plain meaning of the word “individual” as an inventor in 35 U.S.C. § 115, the Federal Circuit held that the Patent Act requires inventors to be human beings. The Federal Circuit found no ambiguity in the statute, which requires that inventors be “individuals.” While the Patent Act does not define an “individual,” the Federal Circuit considered the plain meaning of the word, Supreme Court interpretation of the word in Mohamad v. Palestinian Auth., 566 U.S. 449 (2012), Federal Circuit precedent regarding inventorship, and the Patent Act’s use of the pronouns “himself” and “herself” without using the pronoun “itself.” In Mohamad, the Supreme Court held that the word “individual” when used in statutes refers to human beings in the absence of a Congressional intent to apply a different meaning. The Federal Circuit found no such intent in the Patent Act, siding with the USPTO and the District Court. Accordingly, the Federal Circuit held that an inventor must be an individual, a natural person, and thus may not be a machine. 

Outside of the United States, nearly all patent offices and courts that have considered the question have come to the same conclusion as the USPTO, Eastern District of Virginia, and Federal Circuit, finding that a machine cannot be an inventor. For example, the European Patent Office (EPO) was similarly confronted with “DABUS” as the claimed inventor for two European patent applications and much like the USPTO, determined that the applications did not meet the requirement that the inventor has to be a human being.³ The EPO Boards of Appeal upheld this decision.⁴ Patent Offices in the United Kingdom and Germany have held the same.⁵ When faced with “DABUS” as the inventor in China, the National Intellectual Property Office (CNIPA) pointed to Article 13 of their Detailed Rules for Implementation of the Patent Law and noted that DABUS was not in compliance.⁶ While Australia initially held in favor of DABUS as an inventor, the Federal Court of Australia later reversed that decision.⁷ Thaler did, however, find success in South Africa’s patent office, which granted a patent with DABUS listed as the inventor. For now South Africa is the sole outlier.⁸

Now that most of the patent offices and courts in major patent jurisdictions throughout the world have opined on the issue, careful consideration should be given to inventions that result from artificial intelligence systems. If the applicant is truly of the opinion that a machine, rather than a human author, conceived of an invention, such applicant may consider maintaining the invention as a trade secret and not seeking patent protection.  Perhaps, however, in the future as patent laws catch up with the computer age and software inventions, South Africa will be seen as the trend setter rather than the outlier. 

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