Federal Circuit Agrees With The Uspto On Inventors: Only Human, After All

• Published date: 10 August 2022
• Subject Matter: Intellectual Property, Technology, Patent, New Technology
• Law Firm: Morrison & Foerster LLP
• Author: Mofo Tech Blog

The Federal Circuit made headlines when it affirmed the U.S. District Court for the Eastern District of Virginia's holding that an artificial intelligence (AI) cannot qualify as an "inventor" under the Patent Act - only (human) "individuals" can. The patent application at the heart of the case listed a single inventor with the given name "DABUS" and the family name "(Invention generated by artificial intelligence)." The district court had granted the motion for summary judgment of the United States Patent and Trademark Office (USPTO) after the applicant and assignee of the patent application, Stephen Thaler, challenged the USPTO's denial of his petition and requested reconsideration of the Office's dismissal of his patent application for failure to identify each inventor by his or her legal name. While the Federal Circuit opinion is important, we anticipate the real-life upshot of its holding will be minimal. As the court said, "we are not confronted today with the question of whether inventions made by human beings with the assistance of AI are eligible for patent protection," and yet that is the question that is most relevant today. (Thaler v. Vidal,2021-2347, 2022 WL 3130863 (Fed. Cir. Aug. 5, 2022) at 10.)

The Case

Thaler v. Vidal hinged on a straightforward question of statutory interpretation. Under the Leahy-Smith America Invents Act (AIA), to be accepted, patent applications must include the name of the inventor(s) of the relevant invention along with an oath from such inventor(s) claiming the invention as their own. The AIA in turn defines "inventor" as "the individual or, if a joint invention, the individuals collectively who invented or discovered the subject matter of the invention." 35 U.S.C. ' 100(f) (emphasis added). The AIA does not define "individual."

In the application, Thaler listed only "DABUS" (Device for the Autonomous Bootstrapping of Unified Sentience) as the inventor, claiming the invention was entirely created by the AI. The issue came down to whether an AI like DABUS could be the "individual ... who invented [ ] the subject matter of the invention."

As...