The Federal Circuit recently held as a matter of statutory interpretation that an artificial intelligence system cannot be named as an inventor on a US patent application. This holding, which effectively excludes AI systems from the category of "individuals" eligible to be named as inventors, may complicate the intellectual property strategies of innovators who use advanced AI for research and development. Here's what happened and why it matters. The Federal Circuit was asked to determine whether an AI system called DABUS could be named as the inventor on two separate patent applications. The first disclosed a light source that was calibrated with a specific frequency corresponding to, among other characteristics, certain human brainwave activity.

Can an artificial intelligence (AI) system be a named inventor on a United States patent? No, says a federal appeals court in a decision issued earlier this month. The case, Thaler v. Vidal, arose from two patent applications filed in 2019 by Stephen Thaler, naming an AI system he calls DABUS (for "Device for the Autonomous Bootstrapping of Unified Sentience") as the "inventor." After the U.S. Patent and Trademark Office (PTO) informed Thaler that the applications were incomplete because they did not list a human inventor, he filed a complaint in a federal district court in Virginia. In September 2021, that court ruled against Thaler, citing "the overwhelming evidence that Congress intended to limit the definition of'inventor' to natural persons."

Can an artificial intelligence (AI) system be an inventor? 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 US Court of Appeals for the Federal Circuit found that an artificial intelligence (AI) software system cannot be listed as an inventor on a patent application because the Patent Act requires an "inventor" to be a natural person. Stephen Thaler develops and runs AI systems that generate patentable inventions, including a system that he calls his "Device for the Autonomous Bootstrapping of Unified Science" (DABUS). In 2019, Thaler sought patent protection for two of DABUS's putative inventions by filing patent applications with the US Patent & Trademark Office (PTO). Thaler listed DABUS as the sole inventor on both applications. The PTO found that the patent applications lacked valid inventorship and sent a Notice of Missing Parts requesting that Thaler identify a valid inventor.

The US Court of Appeals for the Federal Circuit affirmed on August 5 that only a natural person--not an artificial intelligence system--can be an inventor. Artificial Intelligence (AI) technology is widely applied as a tool in different technical areas, such as machine learning, image processing, and speech recognition. More complex AI technology can create new products or processes with little or no human help. If an AI system can independently create something new, can it be designated as an inventor? The Federal Circuit finally settled this issue--affirming decisions of the US Patent and Trademark Office (USPTO) and Eastern District of Virginia that an AI system cannot be an inventor.

The Patent Act requires an "inventor" to be a natural person, the US Court of Appeals for the Federal Circuit said, rejecting computer scientist Stephen Thaler's bid for patents on two inventions he said his DABUS system created. Thaler said in an email Friday that DABUS, which stands for "Device for the Autonomous Bootstrapping of Unified Sentience," is "natural and sentient." His attorney Ryan Abbott of Brown Neri Smith & Khan said the decision "ignores the purpose of the Patent Act" and has "real negative social consequences." He said they plan to appeal. The US Patent and Trademark Office declined to comment on the decision.

Thaler had asked for patents on behalf of his AI system Court affirms ruling that patent'inventor' must be human being Court affirms ruling that patent'inventor' must be human being The Patent Act requires an "inventor" to be a natural person, the U.S. Court of Appeals for the Federal Circuit said, rejecting computer scientist Stephen Thaler's bid for patents on two inventions he said his DABUS system created. Thaler said in an email Friday that DABUS, which stands for "Device for the Autonomous Bootstrapping of Unified Sentience," is "natural and sentient." His attorney Ryan Abbott of Brown Neri Smith & Khan said the decision "ignores the purpose of the Patent Act" and has "real negative social consequences." He said they plan to appeal. The U.S. Patent and Trademark Office declined to comment on the decision.

Stephen Thaler and Ryan Abbott plan to bring a light beacon, a beverage container, and a machine called Dabus into court, along with a simple question: Does an inventor need to be human? Depending on how they respond, a panel of judges on the U.S. Court of Appeals for the Federal Circuit could open the door to another significant question: What is "obvious" to a machine? A basic tenet of U.S. law is that patents aren't awarded for inventions that are obvious. The standard of obviousness in patent law is measured against a hypothetical person of ordinary skill in the art. Putting artificial intelligence, with its potential for near omnipotent capabilities, on equal footing as human inventors could have a significant impact on patent law's obviousness standard, attorneys and patent professionals say.

Striking a blow to patent applicants seeking to assert inventorship by artificial intelligence ("AI") systems, the U.S. District Court for the Eastern District of Virginia ruled on September 3, 2021 that an AI machine cannot qualify as an "inventor" under the Patent Act. The fight is now expected to move to the Federal Circuit on appeal. Proskauer has been closely monitoring the quickly-developing legal treatment of AI systems, especially in view of their implications for life sciences patents. AI's presence in life sciences innovation is well established, for example, to predict biological targets of prospective drug molecules and to identify drug design candidates (among many other applications). As we reported in August, two countries--Australia and South Africa--have already permitted AI systems to qualify as "inventors" in patent applications. However, hope for a worldwide trend have been dashed, at least for now.

Section 101 states "[w]hoever invents or discovers…may obtain a patent therefore…" According to 35 U.S.C. § 100, an inventor is defined as an individual or individuals. As technology has advanced and the possibility that AI would invent something became a probability, the question has arisen whether AI can be an inventor under United States law.