Artificial intelligence (AI) is making an impact in our everyday life. AI helps us cut grass and vacuum living rooms. It helps us identify images for applications from waste sorting to medical diagnosis. AI also is making an impact in research and development. New uses arise every day, such as for the treatment of cancers and other diseases. It seems that any current process for advancing the state of the art may be enhanced by applying AI to that process.
With all its promise to enhance technology, it is not surprising that AI can function as an inventor of technology too. This was the situation in Thaler v. Vidal, No. 2021-2347, decided on August 5, 2022, by the Federal Circuit. The patent owner in Thaler claimed that the inventions for which he sought patent protection were created solely by an AI software system without any human participation. Dr. Thaler listed the AI system as the sole inventor, and he disclaimed any inventive contribution from himself.
The U.S. Patent and Trademark Office (USPTO) submitted a missing parts request to Dr. Thaler to name inventors, but he refused. Because Dr. Thaler did not list a natural person as an inventor, the USPTO concluded that the application was incomplete and did not examine it. He petitioned the USPTO director to reconsider the requirement to list a human inventor, but his request was denied. Dr. Thaler then challenged the USPTO’s decision to the District Court for the Eastern District of Virginia. The district court granted summary judgment in favor of the USPTO, holding that an inventor under the Patent Act requires an individual, and an individual must be a natural person under the plain meaning of the term.
Dr. Thaler appealed the district court’s decision to the Federal Circuit. The appellate court considered this sole issue on appeal: “Whether an AI software system can be an ‘inventor’ under the Patent Act.”
The court found that the statute unambiguously requires an inventor to be a natural person. The Patent Act provides that inventors are “individuals,” though it does not define that term. The court relied on U.S. Supreme Court cases interpreting other statutes using the term “individual” and holding that the word “individual” refers to human beings, absent congressional intent otherwise. The Federal Circuit also noted that the Patent Act in some of its provisions uses the term “whoever,” which has been interpreted more broadly than “individual” to include non-human entities.
The decision itself is not surprising and, given the statements from the court, not a close call. The court found that there was only one reasonable construction of the statute: “Here Congress has determined that only a natural person can be an inventor, so AI cannot be.” Thaler, No. 2021-2347, slip op. at 11 (Fed. Cir. Aug. 5, 2022).
There are three takeaways that patent practitioners should consider.