A federal court holds that an inventor under the Patent Act must be a natural person, and a machine cannot be one

2021-09-02District Court

Thaler v. Hirshfeld, 558 F. Supp. 3d 238, No. 1:20-cv-00903-LMB-TCB (E.D. Va. Sept. 2, 2021) (Brinkema, J.), granting summary judgment to the United States Patent and Trademark Office on Application Nos. 16/524,350 and 16/524,532

Stephen Thaler filed two applications on July 29, 2019, and in each application data sheet listed the inventor's given name as DABUS and its family name as "Invention generated by artificial intelligence." Because the machine could not execute an oath, he filed a substitute statement under Section 115(d) of Title 35 of the United States Code asserting that the inventor was under legal incapacity, and he claimed the applications as assignee and owner of the machine. The Office issued notices to file missing parts, dismissed his petitions on December 17, 2019 on the ground that the statutory terms individual and himself or herself are trained on human beings, and Thaler sued under the Administrative Procedure Act. On cross-motions for summary judgment, Judge Brinkema held that the answer to whether an artificial intelligence machine can be an inventor is no on the plain statutory language. Section 100(f) defines an inventor as the individual, or individuals collectively, who invented or discovered the subject matter, Section 115 requires each individual inventor to swear that he or she believes himself or herself to be the original inventor, and the Supreme Court in Mohamad v. Palestinian Authority read individual in its ordinary sense as a human being. Policy arguments are for Congress, which defined inventor as an individual in the America Invents Act of 2011 when artificial intelligence already existed.

What it changesInventorship is now a filing prerequisite with a judicial decision behind it rather than an Office position. Every United States application must name a natural person who conceived the claimed subject matter, and the Office will not process one that does not. For inventions produced with heavy use of models, that means the record of the human contribution has to exist before filing: who defined the problem, who selected and constrained the model's search, who recognized the output as the solution and reduced it to the claimed form. A conception record written contemporaneously, in the engineer's words, is the document that will answer an inventorship challenge, and it should be part of the disclosure form rather than reconstructed by counsel. The court said that a time may come when a machine satisfies accepted meanings of inventorship and that the change would be for Congress, so the correct advice to an engineering team today is to treat the model as a tool and name the people who used it.

More on Inventorship and AI-assisted invention

← All recent developments · Search all developments

Burbage Law is the practice of Jon Burbage, a registered patent attorney. 342 United States patents have issued from applications he wrote; the full list is on the Patents page. More about Jon Burbage.

This is general information about a published decision, agency guidance or piece of legislation. It is not legal advice and does not create an attorney-client relationship. Items concerning offices outside the United States are reported for information only and are not counsel on the law of those countries.