In recent years, the capabilities of, and applications involving, artificial intelligence (“AI”) have dramatically increased, so much so that AI systems are now able to produce works of creativity and ingenuity once thought only to be possible through human efforts. The U.S. Copyright Office has already wrestled with the question of whether creative works authored by AI are eligible for federal copyright protection and determined that they are not in an opinion letter dated February 14, 2022. However, the question of whether an invention in which an AI system is the sole inventive entity can receive patent protection under U.S. law still remained. The Federal Circuit has now answered this question in Thaler v. Vidal with an unequivocal "No, it cannot."
In this case, Stephen Thaler sought patent protection for two inventions developed by his Device for the Autonomous Bootstrapping of Unified Science (“DABUS”) AI system by filing two patent applications in which DABUS was listed as the sole inventor with the United States Patent and Trademark Office (“USPTO”) in July 2019. As an aside, Thaler was also the claimant of the work generated by an AI system that was denied registration by the U.S. Copyright Office. Under U.S. patent law, conception of invention is the hallmark for inventorship. As such, in conjunction with the filing of a patent application, applicants are required to submit a sworn oath or declaration from each inventor identified in the patent application that they, at least in part, conceived of the claimed subject matter within the patent application. To satisfy this requirement, Thaler submitted a statement on DABUS’s behalf, along with a “Statement on Inventorship” and an assignment conveying the patent applications to himself. In response, the USPTO concluded that the two patent applications lacked a valid inventor and were thus incomplete, resulting in the issuance of a “Notice to File Missing Parts” for both applications. Failure to cure the deficiencies outlined within a Notice to File Missing Parts results in the abandonment of the application for which the notice was issued. Thaler unsuccessfully petitioned the USPTO’s director to vacate the issuance of the two notices and subsequently pursued judicial review of the USPTO’s final denial of his petitions by the District Court for the Eastern District of Virginia. The District Court granted the USPTO’s motion for summary judgment and Thaler appealed to the Federal Circuit.
Although the questions of whether an AI system is capable of conceptualizing an invention or capable of assigning its interest in inventive subject matter to another are interesting ones, the Federal Circuit did not venture to resolve such questions. Rather, the court only needed to consider whether the definition of “inventor” set forth in the 2011 Leahy-Smith America Invents Act (the “Patent Act”) extends so far as to encompass an AI system. Within the Patent Act a single inventor is referred to as an “individual” and multiple inventors are referred to as “individuals.” The court acknowledged that the Patent Act does not define the term “individual” but ultimately concluded the term refers to natural persons, i.e., human beings. The court based its decision on: (i) prior guidance by the Supreme Court explaining that the term “individual” ordinarily means a human being; (ii) prior Federal Circuit precedent indicating that inventions must be natural persons and not corporations or sovereigns; (iii) conventional usage of “individual” as a noun; and (iv) usage of the term in other sections of the Patent Act. Having reached the conclusion that inventors must be human beings, the court thus ruled that the DABUS AI system does not qualify as an inventor and affirmed the District Court’s summary judgment ruling against Thaler.
Absent an unlikely review and favorable finding for Thaler by the Supreme Court or new legislation by Congress to the contrary, the meaning of “inventor” under the Patent Act will be limited to human beings, thus precluding patent protection for inventions derived solely by AI. However, as the ruling in Thaler was based exclusively upon the interpretation of the term “inventor,” it does not unequivocally shut the door for potential patent protection for inventions in which AI plays a meaningful role. In this regard, the Federal Circuit took care to specifically note, “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.” Indeed, a number of patents involving AI-related technologies have been issued and the USPTO currently has guidance indicating that certain inventions involving machine learning applications are patent eligible. In any event, moving forward, those involved in technologies heavily rooted in AI should nonetheless carefully assess inventorship and take care to confirm that the inventive subject matter around which a patent application could be based is not solely attributable to (i.e., was not entirely “conceived” by) a non-human entity before considering patent protection. In instances where conception can only be attributed to an AI system or other non-human entity, taking measures to preserve the inventive subject matter as a trade secret may prove to be the more viable path for protection.
Stites & Harbison, PLLC’s full-service Intellectual Property & Technology Group regularly assists clients in the acquisition, management, licensing, and litigation of patents, copyrights, trademarks, and trade secrets. For questions, comments, or assistance with any intellectual property-related matters, please contact the author or any of the other attorneys in our group.