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United States Court of Appeals for the Federal Circuit
August 5, 2022, Decided
[*1209] Stark, Circuit Judge.
This case presents the question of who, or what, can be an inventor. Specifically, we are asked to decide if an artificial intelligence (AI) software system can be listed as the inventor on a patent application. At first, it might seem that resolving this issue would involve an abstract inquiry into the nature of invention or the rights, if any, of AI systems. In fact, however, we do not need to ponder these metaphysical matters. Instead, [**2] our task begins — and ends — with consideration of the applicable definition in the relevant statute.
The United States Patent and Trademark Office (PTO) undertook the same analysis and concluded that the Patent Act defines "inventor" as limited to natural persons; that is, human beings. Accordingly, the PTO denied Stephen Thaler's patent applications, which failed to list any human as an inventor. Thaler challenged that conclusion in the U.S. District Court for the Eastern District of Virginia, which agreed with the PTO and granted it summary judgment. ] We, too, conclude that the Patent Act requires an "inventor" to be a natural person and, therefore, affirm.
Thaler represents that he develops and runs AI systems that generate patentable inventions. One such system is his "Device for the Autonomous Bootstrapping of Unified Science," which Thaler calls "DABUS." Thaler has described DABUS as "a collection of source code or programming and a software program." Supp. App. at 781.
In July 2019, Thaler sought patent protection for two of DABUS' putative inventions by filing two patent applications with the PTO: U.S. Application Nos. 16/524,350 (teaching a "Neural Flame") and 16/524,532 (teaching a "Fractal Container"). [**3] 1 He listed DABUS as the sole inventor on both applications. Thaler maintains that he did not contribute to the conception of these inventions and that any person having skill in the art could have taken DABUS' output and reduced the ideas in the applications to practice.2
In lieu of an inventor's last name, Thaler wrote on the applications that "the invention [was] generated by artificial intelligence." App. at 28, 69. He also attached several documents relevant to inventorship. First, to satisfy 35 U.S.C. § 115's requirement that inventors submit a sworn oath or declaration when applying for a patent, Thaler submitted a statement on DABUS' behalf. Second, Thaler provided a supplemental "Statement on Inventorship" explaining that DABUS was "a particular type of connectionist artificial intelligence" [*1210] called a "Creativity Machine." App. at 198-203, 483-88. Third, Thaler filed a document purporting to assign himself all of DABUS' rights as an inventor.
Full case includes Shepard's, Headnotes, Legal Analytics from Lex Machina, and more.
43 F.4th 1207 *; 2022 U.S. App. LEXIS 21712 **
STEPHEN THALER, Plaintiff-Appellant v. KATHERINE K. VIDAL, UNDER SECRETARY OF COMMERCE FOR INTELLECTUAL PROPERTY AND DIRECTOR OF THE UNITED STATES PATENT AND TRADEMARK OFFICE, UNITED STATES PATENT AND TRADEMARK OFFICE, Defendants-Appellees
Prior History: [**1] Appeal from the United States District Court for the Eastern District of Virginia in No. 1:20-cv-00903-LMB-TCB, Judge Leonie M. Brinkema.
Thaler v. Hirshfeld, 558 F. Supp. 3d 238, 2021 U.S. Dist. LEXIS 167393 (E.D. Va., Sept. 2, 2021)
inventor, patent, invention, natural person, human being, summary judgment, district court, inventorship, unambiguous, Dictionary, software, marks
Patent Law, Infringement Actions, Exclusive Rights, Manufacture, Sale & Use, Administrative Law, Judicial Review, Standards of Review, Arbitrary & Capricious Standard of Review, Civil Procedure, Summary Judgment, Appellate Review, Standards of Review, Jurisdiction & Review, Abuse of Discretion, De Novo Review, US Patent & Trademark Office Proceedings, Appeals, Business & Corporate Compliance, Patent Law, Reexamination Proceedings, Anticipation & Novelty, Invention, Originality, Joinder of Inventors, Joint & Sole Inventorship, Ownership, Ownership, Governments, Legislation, Interpretation, Utility Patents, Process Patents, New Uses, Correction of Inventorship Errors, Courts, Judicial Precedent, Constitutional Law, Case or Controversy, Constitutional Questions, Abstention, Necessity of Determination