Supreme Court declines to review whether an inventor must be a human being

2023-04-24Supreme Court

Thaler v. Vidal, No. 22-919 (U.S. Apr. 24, 2023) (petition for a writ of certiorari denied), leaving in place Thaler v. Vidal, 43 F.4th 1207 (Fed. Cir. Aug. 5, 2022) (precedential) (Stark, J., joined by Moore, C.J., and Taranto, J.)

The Supreme Court denied Stephen Thaler's petition for a writ of certiorari, which presented one question: "Does the Patent Act categorically restrict the statutory term 'inventor' to human beings alone?" The petition, filed March 17, 2023 with Ryan Abbott as counsel of record, arose from Application Serial Nos. 16/524,350, for a light beacon called the Neural Flame, and 16/524,532, for a beverage container called the Fractal Container, each naming as sole inventor the artificial intelligence system DABUS, "Device for the Autonomous Bootstrapping of Unified Sentience." The United States Patent and Trademark Office refused the applications in 2020 for failure to name a natural person, the Eastern District of Virginia upheld the refusal in 2021, and the Federal Circuit affirmed on August 5, 2022, finding "no ambiguity: the Patent Act requires that inventors must be natural persons; that is, human beings," with rehearing denied October 20, 2022. The government waived its response on March 30, 2023. Three amicus briefs supported the petition: from Lawrence Lessig and others on April 12, from the Brooklyn Law Incubator and Policy Clinic and others on April 17, and from the Chicago Patent Attorneys on April 18. The petition was distributed for the conference of April 21, 2023 and denied on April 24, 2023, with no dissent noted on the docket.

What it changesThe question is closed in the courts: every inventor named on a United States application must be a natural person, and an application naming a machine will be refused. What remains open is the question the Federal Circuit expressly left alone, which is how much a human must contribute when a model does part of the work, and that answer will come from the Office, which has a request for comments on exactly that question open until May 15, or from Congress. In-house programs should stop waiting. Finalize the disclosure procedure for machine-assisted inventions now: record the human who framed the problem, chose the inputs, selected and modified the outputs and recognized the solution, name that person, and treat the model as a tool. Where a team's process cannot identify a human who made those decisions, the invention has an inventorship problem that no later guidance will fix, and the better course is to change the process so that a human makes and records them.

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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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