Federal Circuit Panel Balks at Accepting AI as Inventor

A Federal Circuit panel homed in on the question of how to define “inventor” and “individual” in a test case for artificial intelligence inventorship, drawing skepticism from at least two judges.

The term “individual” as used in the Patent Act should be interpreted broadly, extending to artificial intelligence machines such as DABUS, which computer scientist Stephen Thaler listed as the inventor on two patent applications, Ryan Abbott, a partner at Brown, Neri, Smith & Khan LLP, argued to the US Court of Appeals for the Federal Circuit on Monday. Chief Judge Kimberly A. Moore and Circuit Judge Richard G. Taranto centered their questions on how to plainly define “individual,” hesitating at the notion of zero human involvement in the creation of AI-generated inventions.

Taranto noted that in some cases it would be “odd” to list an AI as an inventor. Artificial intelligence refers to a capability, he said, citing dictionary definitions.

“My general sense has been that the term artificial intelligence is nearly always and in some dictionaries only used to refer to the capability, not the machine that has it,” Taranto said. “That would make extremely odd, just for that reason alone, to indulge the usage that you have to indulge when you say, ‘an AI, the AI as a unit,’ that could be an inventor.”

The judges can view DABUS as an inventive entity, as it’s a software program operating on a specific physical computer, Abbott said.

Promoting Innovation

Thaler’s case has circled the globe before arriving at the Federal Circuit, securing only one win so far, in South Africa. Attorneys said his international journey aims more to modernize laws to recognize AI inventorship rather than score a big win in the courtroom.

The US Patent and Trademark Office and the US District Court for the Eastern District of Virginia’s decisions saying DABUS can’t be an inventor on two applications sets a precedent that stymies innovation, Thaler has argued.

The Patent Act has been “routinely” interpreted to promote innovation, Abbott said during oral arguments. Judge Leonard P. Stark, in his first sitting at the Federal Circuit, asked whether any of the case law relevant to Abbott’s argument came after the definition of inventor was added by the 2011 Leahy-Smith America Invents Act.

Stark noted that the Supreme Court’s 2012 decision in Mohamed v. Palestinian Auth. found that individual means natural person, “unless of course there’s some contrary indication,” he said.

Abbott said he wasn’t aware of any case that has interpreted the term more recently. Reading individual to mean natural person, though, wouldn’t be consistent with Congress’s intent in passing the Patent Act, Abbott argued.

“Congress passed the Patent Act to encourage innovation, not to inhibit it,” Abbott said. “Here, ‘individual’ needs a broader meaning as an inventor.”

‘Pandora’s Box’

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.” The gendered pronouns in the act bolster the fact that Congress intended inventors to be people, Dennis C. Barghaan Jr. of the Justice Department argued for the patent office.

DABUS is not a human being, and therefore doesn’t qualify as an inventor, Barghaan said.

Moore and Taranto questioned Barghaan on whether the person who creates the code that programs the computer to then create a genetic sequence, a vaccine, or another invention would be the inventor. Taranto said the panel is not going to resolve the questions of whether a programmer is an inventor in those cases, but asked about what issues arise under those circumstances.

Barghaan argreed that Thaler didn’t have any involvement in the concept creation of the inventions DABUS produced, which is why those inventions aren’t patentable, he said. Listing the programmer as an inventor also “opens a Pandora’s Box” of issues, Barghaan said.

“One person’s innovation is another person’s step backwards,” Barghaan said. “That is the subject matter that Congress is designed to deal with.”

Not allowing inventions created by AI would prevent some “socially beneficial” inventions from benefiting from patent protection, Abbott said. The Patent Act was designed to incentivize innovation and promote the disclosure of trade secrets, he argued, adding that preventing creations generated through AI from getting patents could prevent breakthroughs in areas like medical technology.

Naming the human programmer as the inventor wouldn’t solve the problem, he added, as it’s possible that a someone may invent some code that is then used on thousands of machines that end up producing an invention that the original programmer doesn’t even know exists.

“If it comes from a person or a robot or a room full of monkeys,” Abbott said—before clarifying that he doesn’t think monkeys should actually be included—"all we really want is the system to produce more innovation.”

Taranto asked if the “mythic monkeys” who type up Shakespeare should get copyrights.

Drawing laughter from the courtroom, Abbott said “I see I’m past my time.”

The case is Thaler v. Vidal, Fed. Cir., 21-2347.