Federal Circuit holds that an inventor must be a natural person, so an artificial intelligence system cannot be one

2022-08-05Fed. Cir.

Thaler v. Vidal, 43 F.4th 1207 (Fed. Cir. Aug. 5, 2022) (precedential) (Stark, J., joined by Moore, C.J., and Taranto, J.), affirming Thaler v. Hirshfeld, 558 F. Supp. 3d 238 (E.D. Va. 2021) (Brinkema, J.)

Stephen Thaler filed United States Application Nos. 16/524,350 ("Neural Flame") and 16/524,532 ("Fractal Container") in July 2019 naming as sole inventor DABUS, an artificial intelligence system, and represented that he did not contribute to conception. The Office denied his petitions because "a machine does not qualify as an inventor," and the Eastern District of Virginia granted the Office summary judgment. The Federal Circuit affirmed. For a unanimous panel, Judge Stark held that the question "begins – and ends – with consideration of the applicable definition in the relevant statute": Section 100(f) of Title 35 of the United States Code defines an inventor as "the individual or, if a joint invention, the individuals collectively who invented or discovered the subject matter of the invention," and under Mohamad v. Palestinian Authority the word "individual" means a human being unless Congress indicates otherwise. The Act's "himself or herself" in Section 115 points the same way, and University of Utah v. Max-Planck-Gesellschaft and Beech Aircraft Corp. v. EDO Corp. already hold that inventors must be natural persons. The court rejected Thaler's arguments from the word "whoever" in Sections 101 and 271, from policy, from constitutional avoidance and from South Africa's grant of a patent naming DABUS, and said: "we are not confronted today with the question of whether inventions made by human beings with the assistance of AI are eligible for patent protection."

What it changesUnited States law on the question is settled at the appellate level, and a company's inventorship procedure should treat it as settled: every named inventor is a natural person who conceived some part of the claimed subject matter, and no declaration, assignment or disclosure form should name a system. The work that remains is the question the court said it was not deciding, inventions made by humans with the assistance of a model, and that is where an in-house program's exposure now sits. The practical control is a disclosure process that records, for each invention made with model assistance, which engineer framed the problem, chose the inputs, selected among the outputs and recognized the result, because conception by a human is the fact that will be tested when the patent is enforced or challenged, and in most engineering teams the current record of that fact is a chat log. An application for which no human can be identified as having conceived the claims should not be filed.

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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.

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