DABUS Dares To Dream: A Look At Stephen Thaler's Patent Puzzle

• Jurisdiction: United States,Federal
• Author: Mr Daniel E. Rose
• Law Firm: Volpe Koenig
• Published date: 03 March 2023

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 inUniv. 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...