Thaler v. Hirshfeld - 558 F. Supp. 3d 238 (E.D. Va. 2021)

Rule:

Congress does not, in the ordinary course, employ the word any differently from its common usage. The Dictionary Act applies to all congressional enactments, and similarly applies to the Patent Act. Notably, although Congress remains free, as always, to give the word a broader or different meaning before we will assume it has done so, there must be some indication Congress intended such a result. 

Facts:

Plaintiff Stephen Thaler was in the business of developing and applying advanced artificial intelligence (AI) systems that are capable of generating patentable output under conditions in which no natural person traditionally meets inventorship criteria," and is the owner of DABUS, an artificial intelligence machine listed as the inventor of the '350 application, which claimed a "light beacon that flashes in a new and inventive manner to attract attention ('Neural Flame')," and the '532 application, which claimed a "beverage container based on fractal geometry (`Fractal Container'). In the Application Data Sheets accompanying the Applications, Thaler identified the inventor's "given name" as "DABUS," and under "family name" wrote "Invention generated by artificial intelligence," identifying his own mailing address as the "mailing address of inventor." Thaler also included a "Statement on Inventorship" in the Applications explaining that "[t]he unique aspects under which the instant invention was conceived prompted the inclusion of such statement in order to explain that the inventor of the subject matter of the instant invention of the present application was an AI machine, being a type of 'creativity machine' named TABUS.” Because DABUS could not execute the necessary oath or declaration that the Patent Act requires of an inventor, Thaler included with the Applications a "Substitute Statement Under 37 CFR 1.64 in Lieu of Declaration Under 35 USC § 115(d)," which explained that the "inventor," DABUS, was "under legal incapacity in view of the fact that the sole inventor is a Creativity Machine (i.e., an artificial intelligence), with no legal personality or capability to execute this substitute statement." Accordingly, Thaler, as the "the Applicant and the Assignor of the abovementioned application, as well as the owner of said Creativity Machine, DABUS" signed the substitute statement. The Applications also included a document through which DABUS had ostensibly assigned all intellectual property rights in the claimed invention to Thaler. The assignment document was signed by both "Stephen L. Thaler, On Behalf of DABUS, Assignor," as well as "Stephen L. Thaler, Assignee." After its initial review of the Applications, the USPTO issued plaintiff a "Notice to File Missing Parts of Non-Provisional Application," allowing him two months to submit proper information regarding inventorship because the "application data sheet or inventor's oath or declaration does not identify each inventor or his or her legal name." Thaler filed a petition with the USPTO Director pursuant to 37 C.F.R. § 1.181 in which he asked the USPTO to vacate its "Notice to File Missing Parts," and essentially reiterated the "Inventorship Statement" that he had submitted with the Applications arguing that DABUS should be listed as the inventor. The USPTO dismissed Thaler’s petition, in which it explained that the explicit statutory language that Congress has used to define the term "inventor"—e.g., "individual" and "himself or herself"—was uniquely trained on human beings. The USPTO also denied Thaler’s request for reconsideration in a final written decision. Thaler filed this civil action seeking review of the USPTO's decision, and, after an agreed briefing schedule was entered, Thaler and defendants filed their cross-motions for summary judgment without having engaged in discovery.

Issue:

May DABUS be listed as an inventor in the patent application?

Answer:

No.

Conclusion:

The Supreme Court recently conducted a statutory construction analysis regarding Congress's use of the term "individual" in the Torture Victim Protection Act ("TVPA"), ultimately concluding that "[t]he ordinary meaning of the word, fortified by its statutory context," referred to a "natural person[]." Although the TVPA and Patent Act concern different subject matter, the Supreme Court's statutory analysis of the term "individual" remained applicable here. "Because the [Patent Act] does not define the term 'individual,' we look first to the word's ordinary meaning." When used "[a]s a noun, 'individual' ordinarily means '[a] human being, a person.' Similarly, the Patent Act uses the term "individual" as a noun, and therefore "'individual' ordinarily means [a] human being, a person.'" As in Mohamed, this definition was consistent with the ordinary usage of the term "individual" to refer to a human being, as artificial intelligence machines or systems are not normally referred to as "individuals" in ordinary parlance.

Congress's use of the term "individual" in the Patent Act strengthened the conclusion that an "inventor" must be a natural person. Congress provided that in executing the oath or declaration accompanying a patent application, the inventor must include a statement that "such individual believes himself or herself to be the original inventor or an original joint inventor of a claimed invention in the application." By using personal pronouns such as "himself or herself" and the verb "believes" in adjacent terms modifying "individual," Congress was clearly referencing a natural person. Because "there is a presumption that a given term is used to mean the same thing throughout a statute," the term "individual" is presumed to have a consistent meaning throughout the Patent Act. As the USPTO correctly observed, Thaler relies on no statutory text within the Patent Act to support his argument that Congress intended to deviate from the typical use of "individual" as meaning a natural person. Instead, Thaler argued that "[e]ven if statutory and judicial language refers to inventors as individuals, none of this has been in the context of AI-[g]enerated [i]nventions." That argument did not undercut that the ordinary meaning of the word "individual," fortified by its statutory context, referred to natural persons, which necessarily excluded artificial intelligence machines.