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

• Jurisdiction: United States,Federal
• Law Firm: Volpe Koenig
• Subject Matter: Intellectual Property, Copyright, Patent
• Author: Mr Daniel E. Rose
• 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 to the federal District Court in Virginia, which sustained the rejection; and then to the Federal Circuit, which similarly agreed with the USPTO inThaler 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...