DABUS Will Need to Wait--U.S. District Court Affirms USPTO's Denial of AI System as Inventor

Earlier this month, a federal district court issued the first judicial decision in the country addressing whether an AI system can be an "inventor" under U.S. patent law. The decision was rendered by the U.S. District Court for the Eastern District of Virginia in Thaler v. Hirshfeld on appeal from the U.S. Patent and Trademark Office's (USPTO) decision that refused to allow Thaler's two patent applications to proceed because he listed DABUS (an AI machine) as the inventor. Thaler filed the applications in 2018--one for an invention used to contain food and the other for a flashing beacon for attracting attention in emergencies. In statements filed in support of the applications, Thaler listed DABUS as the inventor, claiming that he had acquired the right to the grant of the patents by "ownership of the creativity machine." In affirming the USPTO's denial of the applications, the court held that based on the plain statutory language of the U.S. Patent Act and Federal Circuit authority, an AI machine cannot be an inventor because an inventor must be an "individual," which under common interpretation and court precedent means a natural person. The court stated that Thaler's argument was based on policy considerations and the purpose of the patent clause of the U.S. Constitution, and that the decision to expand the scope of inventorship is squarely within the authority of Congress.