Inventor Robots Deserve Patent Rights, Federal Circuit to Hear

A machine called DABUS is the rightful inventor of a light beacon and a beverage container, computer scientist Stephen Thaler will argue to the Federal Circuit on Monday in a battle over whether or not a human must be the inventor of a patent.

Thaler built the artificial intelligence “creativity machine,” which he says should be listed as the inventor of two patents. The test case for AI inventorship has arrived at the US Court of Appeals for the Federal Circuit after losses around the world in the UK, Europe, and Australia. Only a court in South Africa has sided with Thaler.

The US Patent and Trademark Office and the US District Court for the Eastern District of Virginia have also rejected the notion that the US should grant patents to a machine and not a person.

Granting DABUS the patents would propel innovation, Thaler says. The USPTO’s denial of the patents shows it’s “belatedly adopting luddism,” Thaler wrote in his opening brief at the Federal Circuit.

Thaler last week sued the US Copyright Office, asking a federal district court to overturn denials of his copyright registration applications for not having a human author.

“He’s really out there pushing the limits,” said Susan Krumplitsch, a partner at DLA Piper LLP. “He’s at the forefront of trying to get the PTO to think more broadly about inventorship and innovation.”

Natural Person

Thaler listed DABUS— which stands for Device for the Autonomous Bootstrapping of Unified Sentience—as the inventor on patent applications for a food container and a light beacon, saying the inventions were AI-generated.

DABUS performed the “mental part” of creating the inventions, Thaler argues. Thaler can’t name himself as the inventor instead because he didn’t contribute to the concepts, according to his brief.

But each inventor on US patent applications must be a “natural person,” the patent office found. Thaler will tell the Federal Circuit that the PTO and the Virginia court were wrong to find that words like “individual” and “person” exclude machines.

“He’s asking the courts to take a big leap, to go against Supreme Court precedent, to go against the plain language of the Patent Act, to go against prior Federal Circuit decisions,” Krumplitsch said. “It boils down to more of a policy argument that he’s making that if the courts don’t recognize this broader definition of inventor to include AI or any other new technology, that’s really going to stymie innovation.”

Pushing the Envelope

Thaler’s international quest might be more successful at getting policymakers to start thinking about how current laws could stymie innovation, rather than his goal of green-lighting AI inventors, said Anthony Trippe, the managing director of Patinformatics LLC, an advisory firm specializing in patent analytics.

“I think his purpose is noble, and what they’re trying to accomplish is necessary,” Trippe said. “Because, alternatively, you just closed down an entire avenue of being able to create new and exciting and novel outputs.”

While courts often throw policy questions back to Congress to decide, Krumplitsch said it’ll be interesting to see if the Federal Circuit panel will probe attorneys about the innovation concerns.

It’s still up to Congress whether any laws should be changed, Krumplitsch added, but the judges could start addressing the idea that not allowing an AI to be an inventor on a patent impedes scientific progress.

“He’s really doing this to push the envelope and to get people to start thinking about how to modernize the laws to deal with technology,” Krumplitsch said. “When the America Invents Act was passed in 2011, no one was thinking about artificial intelligence. Just the idea that an AI system could be an inventor, that wasn’t on anyone’s radar.”

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

The case is Thaler v. Vidal, Fed. Cir., No. 21-2347, oral argument 6/6/22.