Just Can't Catch a Break - US Court of Appeals Decides That AI Cannot be an Inventor of Patents

Artificial intelligence's road to recognition as a legal entity keeps hitting obstacle after obstacle, and as things stand it looks like right's in AI created works or inventions will be questionable without proper legislative intervention. Despite the continuous stumbling blocks, it seems that some inventors are very interested in continuing the fight, so yet another important decision has been reached on AI inventorship of patents in the US. The Court of Appeals recently handed down its decision on the matter, which continues on the near never-ending line of decisions across the globe that have been discussed on this blog before many times (for example here, here and here). 

The case of Stephen Thaler v Katherine Vidal concerned the DABUS AI system, which will be very familiar to the readers of this blog by now. DABUS was created by Mr Thaler and set out to create a number of inventions, and subsequently Mr Thaler applied for patents for some of these inventions (at issue specifically applications 16/524,350 and 16/524,532). In these applications Mr Thaler listed DABUS as the sole inventor. Mr Thaler also handled all of the filing formalities for DABUS, including a number of documents setting out why it is the inventor of the inventions. The USPTO rejected both applications due to them lacking a valid inventor and therefore being incomplete. The District Court, on appeal, found that "an 'inventor' under the Patent Act must be an 'individual' and the plain meaning of 'individual' as used in the statute is a natural person", and Mr Thaler therefore appealed to the Court of Appeals. 

Justice Stark noted that the sole issue in the case is whether an AI software system can be an "inventor" under the Patent Act. 

The Patent Act expressly sets out that inventors are 'individuals', which is means "the individual or, if a joint invention, the individuals collectively who invented or discovered the subject matter of the invention". The key here is the word individual, which Justice Stark highlighted to meaning "...a human being" (as decided by the Supreme Court in Mohamad v Palestinian Authority). Unless defined otherwise by statute this remains the definition, as is the case under the Patent Act. 

When not inventing, AI likes to take it easy with
a little light gardening in the evenings

Despite the wording 'whoever' being used in the Patent Act, the fact remains that these provisions are still subject to the above, i.e. that an inventor be a human being. Mr Thaler also noted that AI software programs should qualify as 'inventors' since otherwise patentability would depend on "the manner in which the invention was made". Justice Stark rejected this position, specifying that this isn't about inventorship, and also that that inventions may still be non-obvious even if they are discovered during 'routine' testing or experimentation. 

Existing precedent supports this position, with, for example, the decision in the University of Utah v Max-Planck setting out that "inventors must be natural persons and cannot be corporations or sovereigns", and in Beech Aircraft Corp v EDO Corp where it was decided that "only natural persons can be 'inventors'". Justice Stark noted that, while they deal with a different question (i.e. corporate ownership), the cases nonetheless support the position that the plain meaning of 'inventor' in the Patent Act is limited to natural persons.

Justice Stark then touched on Mr Thaler's various arguments to round out their decision. Mr Thaler had argued that inventions generated by AI should be patentable in order to encourage innovation and public disclosure. Justice Stark determined this to be purely speculative and lacking in basis under the Patent Act. Mr Thaler also argued constitutional avoidance where permitting AI programs to be inventors would support the constitutional purpose of patents "to promote the progress of science and the useful arts" and that not recognizing AI as an inventor undermines such progress, raising potential constitutional concerns that we should avoid. Justice Stark also readily rejected this position, setting out that the lack of AI inventorship would be unconstitutional, since Congress has decided to legislative limiting inventorship to human beings. 

The Court of Appeals therefore rejected Mr Thaler's appeal. 

The decision was, by no means, a surprise and continues the trajectory of rejection that AI inventorship has faced over the last several years (despite the South African CIPC registering DABUS' inventions as patents, being the only jurisdiction to do so so far). It remains to be seen whether Mr Thaler will want to try and take the matter to the Supreme Court, but it would seem unlikely to be picked up due to the sheer clarity of the matter in the US. A future involving AI inventorship would clearly require further steps from legislatures across the board, but currently there seems to be very little appetite to do so.