Home Source code No brains, no gain: US patent inventors must be human | Pillsbury – Internet and Social Media Law Blog

No brains, no gain: US patent inventors must be human | Pillsbury – Internet and Social Media Law Blog


The United States Court of Appeals for the Federal Circuit agreed with the United States Trademark Office (PTO) in holding that artificial intelligence (AI) cannot be considered an “inventor” for the purposes of obtaining patents.

Computer scientist Stephen Thaler has argued that his “DABUS” AI system1 (which he describes as a collection of source code and software or “Creativity Machine”) was illegally denied patents by the PTO in July 2019 for two inventions he generated without his input – a food container and a beacon light. Instead of an inventor’s last name, patent applications indicated that the inventions were generated by artificial intelligence. The PTO rejected the applications on the grounds that they were incomplete because a machine is not considered an “inventor”, who must be a natural person.

The Court ruled that the Patent Act, since 2011, defines an “inventor” as a person or persons who invented or discovered the subject matter of the invention. Although the Patent Act does not define the individual, the Court relied on the interpretation of the United States Supreme Court and the dictionary definition of “individual” as a person or human being . Additionally, the three-judge panel acknowledged that the Patent Act uses the personal pronouns “himself” and “herself,” rather than “herself,” as further evidence that Congress failed to intends to allow non-human inventors. The Court also noted that its decision is supported by its own case law that neither corporations nor sovereigns can be “inventors” under the Patent Act.

The Court goes on to reject Thaler’s arguments that the term “whoever” in many provisions of the Patent Act is not persuasive evidence that the “inventor” includes AI. The provision stating that “anyone” who discovers something can obtain a patent for that discovery, is subject to the requirements for obtaining that patent, including the definition of “inventor” which unambiguously excludes AI. Moreover, the use of “anyone” to describe entities and corporations that infringe patents has no bearing on whether non-humans can also be “inventors” of patents.

The Court noted that the Thaler case is a simple matter of statutory interpretation that begins and ends with the ordinary meaning of the text, which clearly means “inventor” to refer to a human individual. For this reason, the panel rejected Thaler’s public policy argument that patenting AI-generated inventions promotes innovation. However, it should be noted that the Court left unanswered the question of whether inventions made by man with the assistance of AI are eligible for patent protection.

This decision is just one of many, since Thaler has filed its DABUS patent application in several countries around the world. The US Court of Appeal’s decision is consistent with what UK, Australian and European patent officials have concluded. Thaler’s only victory to date comes from a South African court which granted a patent with DABUS as the inventor.

Thaler is also testing US copyright standards in a court case against the US Copyright Office for denying a copyright claim for AI-generated digital artwork generated by its AI system, Creativity Machine. The lawsuit filed in June alleges that the Copyright Office unlawfully denied the request on the grounds that the work “lacks the human authorship necessary to support a copyright claim.”

BloombergLaw reports that Thaler plans to appeal the decision on the patent to the High Court. Businesses and lawyers should continue to monitor developments as the future of intellectual property protection for AI-generated products unfolds.

1 “DABUS” stands for “Device for Autonomous Booting of Unified Sensitivity”.

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