Revisiting AI Inventorship In Thaler v. Vidal

• Published date: 05 October 2022
• Subject Matter: Intellectual Property, Patent
• Law Firm: Holland & Knight
• Author: Mr Ji Mao

The U.S. Court of Appeals for the Federal Circuit recently released its decision in Thaler v. Vidal, No. 21-2347 (Fed. Cir.), the much-discussed case that addresses whether artificial intelligence (AI) software can be listed as the inventor on a patent application. This post summarizes the Federal Circuit's opinion.

For a more in-depth summary of the dispute and the parties' positions, I encourage you to read this blog's earlier post covering the oral arguments in this case. The short version, however, is that the U.S. Patent and Trademark Office (USPTO) refused to allow two patent applications where an AI system was listed as the sole inventor. The USPTO concluded that both applications were incomplete because they lacked a valid inventor. According to the USPTO, the U.S. Patent Act "limit[s] inventorship to natural persons." Dr. Stephen Thaler, who filed the patents on behalf of his AI system, filed a series of appeals until the case reached the Federal Circuit.

On appeal, the Court affirmed the district court's holding that an AI could not be listed as an inventor on a patent application because the Patent Act requires that inventors must be natural persons. The Federal Circuit agreed with the USPTO's conclusion that the Patent Act expressly provides that inventors must be "individuals." Because the Patent Act itself does not define the word "individual," the Federal Circuit relied on the U.S. Supreme Court precedent in Mohamad v. Palestinian Auth., 566 U.S. 449 (2012), which explained that when used "[a]s a noun, 'individual' ordinarily means a human being, a person." The Federal Circuit also relied on definitions from the Oxford English Dictionary, Dictionary.com, the Dictionary Act and the Federal Circuit's own precedent in Univ. of Utah v. Max-Planck-Gesellschaft zur Forderung der Wissenschaften E.V., 734 F.3d 1315 (Fed. Cir. 2013), which held that "[i]nventors must be natural persons and cannot be corporations or sovereigns."

Arguments Rejected

The...