August 10, 2022
The US Court of Appeals for the Federal Circuit affirmed on August 5 that only a natural person—not an artificial intelligence system—can be an inventor.
Artificial Intelligence (AI) technology is widely applied as a tool in different technical areas, such as machine learning, image processing, and speech recognition. More complex AI technology can create new products or processes with little or no human help. If an AI system can independently create something new, can it be designated as an inventor? The Federal Circuit finally settled this issue—affirming decisions of the US Patent and Trademark Office (USPTO) and Eastern District of Virginia that an AI system cannot be an inventor.
“DABUS” is an AI system developed by Dr. Stephen Thaler capable of autonomous invention. To test the limits of patent laws with respect to AI inventors, Dr. Thaler filed patent applications for a new type of food container “invented” by DABUS in at least 17 jurisdictions worldwide, including the United States, Europe, China, Australia, and South Africa. These applications list the sole inventor as: “DABUS—The invention was autonomously generated by an artificial intelligence.”
The USPTO rejected the DABUS patent application in a decision on April 20, 2020. That decision was upheld in district court on September 2, 2021. Dr. Thaler then appealed to the US Court of Appeals for the Federal Circuit.
US PATENT LAW DOES NOT RECOGNIZE AI INVENTORS
The Federal Circuit held that the Patent Act requires an “inventor” to be “a human being” (i.e., “a natural person”). The conclusion is based on the “plain text” of the Patent Act. The plain meaning of “inventor” in the Patent Act was previously applied by the court to conclude that “neither corporations nor sovereigns can be inventors.” The court refused to “stray beyond the plain text” or open up multiple readings of the Patent Act. The Federal Circuit thus affirmed the decisions by the USPTO and US District Court for the Eastern District of Virginia, holding that “only a natural person can be an inventor, so AI cannot be.”
US patent law is directed to inventions made by humans. Per 35 USC § 100(f), “The term ‘inventor’ means the individual or, if a joint invention, the individuals collectively who invented or discovered the subject matter of the invention.” Per 35 USC § 101, “Whoever invents or discovers any new and useful process, machine, manufacture, or composition of matter, or any new and useful improvement thereof, may obtain a patent therefor, subject to the conditions and requirements of this title.”
Although current US patent law requires human inventors, this may change in the future. The district court stated:
As technology evolves, there may come a time when artificial intelligence reaches a level of sophistication such that it might satisfy accepted meanings of inventorship. But that time has not yet arrived, and, if it does, it will be up to Congress to decide how, if at all, it wants to expand the scope of patent law.
If Congress chooses to expand the scope of patent laws, the updated law would need to (1) address assignments and declarations, such as allowing a human surrogate to sign assignment and declaration documents on behalf of an AI inventor, and (2) replace “person having ordinary skill in the art [PHOSITA]” with “ordinary skill in the art [OSITA].”
AI INVENTORS IN OTHER JURISDICTIONS
In the United Kingdom, the England and Wales High Court held that “a patent can only be granted to a person.”. The Federal Court of Australia initially held that under Australia’s Patents Act 1990 (Cth), the DABUS AI inventor could be designated as an inventor with ownership rights vesting in Dr. Thaler as the owner of DABUS. Later, the Federal Court of Australia reversed the first ruling, holding that “[o]nly a natural person can be an inventor.” Although the rationales behind the decisions are slightly different, the UK, US, and Australian courts have reached consistent outcomes.
South Africa is an outlier. In South Africa, patent applications are examined solely for compliance with formal requirements (e.g., whether the documents filed are legible and capable of reproduction). By giving the artificial inventor the name “DABUS,” the formal requirement of having a name is satisfied. Until there is a judicial decision regarding AI inventors, the current acceptance of an AI inventor carries little weight.
The Federal Circuit denied inventorship rights for AI systems based on the plain text of the Patent Act. Courts in the United Kingdom and Australia are aligned with US courts on this issue, and it is reasonably expected that other jurisdictions will reach the same conclusion. Current patent laws would need to be modified before AI systems can be designated as inventors. There may be increased pressure to accommodate AI inventors, but legislative bodies, such as US Congress, are likely to be slow.
If you have any questions or would like more information on the issues discussed in this LawFlash, please contact any of the following Morgan Lewis lawyers:
David V. Sanker, Ph.D.
Jianbai Wang, Ph.D.
 Thaler v. Vidal, No. 21-2347 (Fed. Cir. 2022)
 Thaler v. Hirshfeld, 558 F. Supp. 3d 238 (E.D. Va. 2021).
 See Thaler v Comptroller, ] EWHC 2412 (Pat)
 See Commission of Patents v. Thaler  FCAFC 62 (April 13, 2022).