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Inventors Must Be Human, Federal Circuit Rules in Blow to AI (1)

Aug. 5, 2022, 2:46 PMUpdated: Aug. 5, 2022, 4:55 PM

Computer scientist Stephen Thaler was dealt another blow in his battle for artificial intelligence machines to be recognized as inventors on patents, after the nation’s top patent court found that inventors must be humans.

The term “individual” in the Patent Act refers only to humans, meaning an AI doesn’t count as an inventor on a patentable invention, the US Court of Appeals for the Federal Circuit ruled Friday.

The decision lines up with courts in the European Union, the United Kingdom, and Australia that have refused to accept Thaler’s argument. His only currently existing win is from a South African court that said an AI can be a patent inventor.

Unless the US Supreme Court steps in, the Federal Circuit is typically the final authority on US patent matters—hearing all such appeals from federal district courts and the US Patent and Trademark Office.

Thaler already plans to appeal to the high court, his attorney, Ryan Abbott of Brown, Neri, Smith & Khan LLP, said.

The Federal Circuit adopted a “narrow and textualist approach” to the Patent Act, Abbott said.

“It ignores the purpose of the Patent Act and the outcome that AI-generated inventions are now unpatentable in the United States,” he said. “That is an outcome with real negative social consequences.”

Test Case

The case has served as a test in worldwide jurisdictions over whether an AI system can be named as an inventor on a patent. Thaler is also suing the US Copyright Office over the denial of his copyright registration for not having a human author.

A three-judge Federal Circuit panel didn’t need to question whether AI should have rights as an inventor, Judge Leonard P. Stark wrote in the precedential opinion.

“However, we do not need to ponder these metaphysical matters,” Stark wrote. “Instead, our task begins—and ends—with consideration of the applicable definition in the relevant statute.”

Thaler says his “creativity machine,” called DABUS, is the sole inventor on patent applications for a food container and a light beacon. The patent and trademark office denied the applications on the basis that there must be a human inventor for an invention to be patentable.

Thaler argued to the Federal Circuit that the term “individual” in the Patent Act should be interpreted broadly to fulfill the law’s goal of promoting innovation. Judges during oral argument heavily questioned Thaler’s side on the plain language meaning of “individual” and how there could really be no human involvement in an invention.

‘Individual’ Means Human

The Patent Act defines an inventor as “the individual, or, if a joint invention, the individuals collectively who invented or discovered the subject matter of the invention.” While the provision doesn’t define the term “individual,” the Supreme Court has previously ruled in a non-patent case that the word ordinarily means a human, according to the opinion.

Nothing in the law shows or implies that Congress intended “individual” to mean anything other than a natural person for the sake of inventorship, Stark wrote. The Patent Act also uses the pronouns “himself” and “herself,” meaning Congress didn’t intend to allow non-human inventors, the Federal Circuit found.

Other Federal Circuit case law supports the decision, Stark wrote, adding that the appeals court has previously held that corporations and sovereigns can’t be inventors.

Stark noted that the court isn’t deciding whether inventions made by humans who had AI assistance are eligible for patent protection. The panel rejected Thaler’s arguments that AI inventors should be permitted to encourage innovation, calling the statement “speculative.”

“Here, there is no ambiguity: the Patent Act requires that inventors must be natural persons,” Stark wrote, “that is, human beings.”

Chief Judge Kimberly A. Moore also served on the panel, along with Judge Richard G. Taranto.

Brown, Neri, Smith & Khan LLP represents Thaler. The Justice Department represents the government.

The case is Thaler v. Vidal, Fed. Cir., No. 21-2347, opinion 8/5/22.

(Updated with additional reporting throughout.)

To contact the reporter on this story: Samantha Handler in Washington at shandler@bloombergindustry.com

To contact the editor responsible for this story: Jay-Anne B. Casuga at jcasuga@bloomberglaw.com