Artificial Intelligence System Cannot Be Listed as Inventor
On Friday, the Federal Circuit held that the Patent Act requires an inventor to be a natural person, in response to a patent applicant who alleged that an artificial intelligence system was the inventor of a patent application. Thaler v. Vidal, No. 2021-2347, 2022 WL 3130863 (Fed. Cir. Aug. 5, 2022).
The patent applicant, Stephen Thaler, asserted that he develops and runs artificial intelligence systems that generate patentable inventions. Mr. Thaler then sought patent protection through two patent applications and listed the artificial intelligence system as the inventor. After the U.S. Patent and Trademark Office (USPTO) denied the patent applications for failure to identify a valid inventor, Mr. Thaler and the USPTO adjudicated the matter in the U.S. District Court for the Eastern District of Virginia. The District Court found that the Patent Act requires an inventor to be a natural person. Thaler v. Hirshfeld, 558 F. Supp. 3d 238, 249 (E.D. Va. 2021), aff’d sub nom. Thaler v. Vidal, No. 2021-2347, 2022 WL 3130863 (Fed. Cir. Aug. 5, 2022).
In affirming the District Court’s decision, the Federal Circuit first indicated that it need not perform an “abstract inquiry into the nature of invention or the rights, if any, of AI [artificial intelligence] systems.” Rather, the court began and ended on the “applicable definition in the relevant statute.” Specifically, the court emphasized that there is no ambiguity that “the Patent Act requires that inventors must be natural persons; that is, human beings.”
The Federal Circuit found that the Patent Act’s text clearly provides that inventors must be “individuals.” While the court noted that the Patent Act does not explicitly define “individual,” the court nevertheless found that this term is unambiguous based on a prior Supreme Court case, dictionaries, the Dictionary Act, and the text of the Patent Act itself. Notably, the court found that all of these sources support the position that an individual must be a human being. The court also cited to its own precedents holding that corporations and sovereigns cannot be inventors under the Patent Act.
The court’s ruling was unsurprising based on the statutory language and is a reminder of the bigger issue for preparing and filing patent applications: that care should be taken to get inventorship, i.e., listing of inventor or inventors, correct to avoid potential problems, which may be fatal, for the grant of a patent (as in this case), and also for enforceability of a granted patent.
Gibbons will continue to monitor new developments related to inventorship.