Imagine That IP Law Blog

Before examining whether a particular invention is patentable over the prior art, there’s an even more fundamental question: who is the inventor? The U.S. Constitution gives Congress the power to grant exclusive patent rights to inventors, but does not define who or what qualifies as an inventor. Previously, this has been a relatively straightforward issue, with the Federal Circuit noting in Univ. of Utah v. Max-Planck-Gesellschaft zur Forderung der Wissenschaften e.V, 734 F.3d 1315, 1323 (Fed. Circ. 2013), that “inventors must be natural persons and cannot be corporations or sovereigns.” With the explosion of artificial intelligence systems in the past decade, one man is raising a very interesting question: can machines be inventors when they contribute to the invention?

Dr. Stephen Thaler, the CEO of Imagination Engines, Inc., developed an artificial intelligence system called DABUS or “Device for the Autonomous Bootstrapping of Unified Sentience,” which he contends created two new inventions: a food container with a fractal profile, and an attention-getting flashing light or “neural flame”. Thaler filed patent applications on these inventions at the U.S. Patent and Trademark Office (USPTO) (as well as in 17 other jurisdictions), and named DABUS as the inventor. The USPTO rejected the application, prior to any substantive examination being performed, because the application did not properly name an inventor. Thaler appealed first to the federal District Court in Virginia, which sustained the rejection; and then to the Federal Circuit, which similarly agreed with the USPTO in Thaler v. Vidal, 43 F.4th 1207 (Fed. Cir., Aug. 5, 2022) published last August. Thaler is now preparing an appeal to the Supreme Court.

An ambiguous statute?
35 U.S.C. §100(f) defines an “inventor” as “the individual or, if a joint invention, the individuals collectively who invented or discovered the subject matter of the invention.” However, “individual” is not defined anywhere in the Patent Act. Thaler, in his opening brief to the Federal Circuit, noted that the Supreme Court had previously considered the term “individual” to be “open to multiple interpretations, permitting it, linguistically speaking, to include natural persons, corporations, and other entities.”  (Mohamad v. Palestinian Auth., 566 U.S. 449, 462 (2012) (Breyer, J., concurring)) Thaler also cited the Dictionary Act, 1 U.S.C. §1, which defines the words “person” and “whoever” as used in “any Act of Congress, unless the context indicates otherwise” to include “corporations, companies, associations, firms, partnerships, societies, and joint stock companies, as well as individuals.”

The USPTO responded, and the courts have so far agreed, that the Patent Act does provide such context and distinguishes between natural persons and corporate entities. For example, 35 U.S.C. §115(b)(2) requires that the inventor or inventors each execute an oath or declaration declaring that “such individual believes himself or herself to be the original inventor or an original joint inventor of a claimed invention in the application.” (emphasis added). As the Federal Circuit noted, “[i]t does not also use ‘itself,’ which it would have done if Congress intended to permit non-human inventors.” (43 F.4th at 1212)

Why does it matter?
Thaler could have applied for the patents and named himself as an inventor, and no one would be the wiser, right? But Thaler insists that he did not participate in the conception of these inventions, even stating that he did not identify any problem for DABUS to solve, and did not select any special training data for the system to learn from. 18 U.S.C. §1001 makes it a crime to make a materially false representation to the government, and Thaler contends that identifying himself as the inventor would qualify. Since an invention was created, and no human participated in its creation, then the inventor must be non-human according to Thaler.

This is really a philosophical argument about creativity and automation. If an infinite number of monkeys at an infinite number of typewriters could reproduce the works of Shakespeare, should their random output be protected? If instead of plays, their output is patent applications, should those applications be patentable even if they were created without any understanding of the technical problem or solution they address? If society says no, is this just protectionism for human inventors that might be replaced by AI systems? If DABUS or a next-generation AI could generate millions of pages including among them every possible invention, every work of literature, and every image and those all become public domain, does that make it impossible for any business to have exclusive intellectual property rights, and what would that mean for the modern IP-driven economy? Thaler has separately applied for copyright registration on an autonomously created work of art, and been similarly rejected by the U.S. Copyright Office for failing to name an author.

What does this mean for enterprises using AI?
Probably not much. It is unlikely that the Supreme Court will accept Thaler’s petition for writ of certiorari, because, as the Federal Circuit concluded, “Thaler’s policy arguments are speculative and lack a basis in the text of the Patent Act…” Without significant ambiguity in the text of the act, and with no Constitutional issues to address, the Court will likely want to remain hands off and wait for Congress to make a change, if any. This is also distinct from recent cases involving patent eligibility where the Court stepped in to address policy questions around patentability of software, business methods, and medical innovations.

The Federal Circuit also noted that the case did not raise “the question of whether inventions made by human beings with the assistance of AI are eligible for patent protection,” and it is likely that such inventions are patentable. Unlike Thaler’s hands-off approach with DABUS, enterprises using AI systems typically do identify a problem to be solved and carefully select or process training data or outputs in order to address the problem. Rather than an independent inventor, the AI system is an automated processing and analysis tool, no different than a calculator or spreadsheet, at least legally.

Whether this remains true in the future is unknown. However, to date, Thaler’s DABUS-created patent applications have been rejected by every jurisdiction except for South Africa, which is a “registration-only” regime and does not perform substantive examination. DABUS’ proverbial dreams of being an inventor may ultimately prove futile.