Breaking Patent Law News: The Robots Haven’t Taken Over Yet

We hear a lot lately about all the things artificial intelligence, nicknamed “AI” for short, can do.  Apparently, AI devices can even invent things.  But, if they do, they still aren’t entitled to a patent.  So, the robots aren’t taking over at the Patent Office any time soon. 

Meet DABUS the inventive AI machine

Stephen Thaler used an AI machine called DABUS to create two devices.  (That isn’t DABUS depicted above. It’s just a robot.) First was “Neural Flame”, a light beacon that flashes in a new and inventive manner to attract attention.  Next was a “Fractal Container,” a beverage container based on fractal geometry.  Mr. Thaler filed patent applications naming DABUS the AI machine as the inventor.  He signed the required inventor’s oath for DABUS and an assignment of inventor’s rights from DABUS to him.  The application made it clear the invention was made by an AI machine.

The Patent Office says no, and Mr. Thaler goes to court

The Patent Office rejected the application.  Only people can be inventors, it said. 

Mr. Thaler filed a declaratory judgment action in the District of Virginia asking the court to rule that a patent application should not be rejected just because no natural person is named as inventor.  Instead, the patent application should list the AI device as inventor if it has met the criteria for inventorship.  The District Court rejected the claim.

Meanwhile, in other countries . . .

The issue may not be quite as out there as it seems.  The South African Patent Office issued a patent listing DABUS as the inventor.  And a federal judge from Australia entered an order a couple of days later that a nonhuman could be named as an inventor on a patent.

No go at the Federal Circuit

But U.S. Patent law doesn’t work that way.  The Federal Circuit issued its decision today holding that only humans can be inventors under patent law.  Thaler v. Vidal, No. 2021-2347 (Fed. Cir., Aug. 5, 2022).  

The Court began by noting,” it might seem that resolving this issue would involve an abstract inquiry into the nature of invention or the rights, if any, of AI systems.”  That sounds like it could be fun.  But the Court found it did not “need to ponder these metaphysical matters.  Instead, our task begins – and ends – with consideration of the applicable definition in the relevant statute.”

The patent statute requires that inventors be “individuals.”  35 U.S.C. §§ 100(f), 100(g), 115.  The Patent Act doesn’t define “individual,” but the Supreme Court has explained that, when used as a noun, “individual usually means a person,” unless there is some indication Congress intended a different meaning.  Nothing in the Patent Act supports such a meaning.  In fact, the Act refers to individuals using person pronouns like “himself” or “herself” to refer to individuals.  It never says “itself.”

In short, the Federal Circuit concluded: “Statutes are often open to multiple reasonable readings. Not so here. This is a case in which the question of statutory interpretation begins and ends with the plain meaning of the text.  . . .  In the Patent Act, “individuals” – and, thus, “inventors” – are unambiguously natural persons.”

Now what?

One can predict Mr. Thayer and DABUS will take things all the way the Supreme Court if they can. But in light of the statutory language that seems unlikely to change things. 

If the robots are to be inventors in the U.S., somebody will have to persuade Congress to change the Patent Act.