Thaler v. Vidal
volume_reporter_page_placeholder (2022)
Rule of Law:
The U.S. Patent Act requires an inventor to be a natural person; therefore, an artificial intelligence system cannot be listed as an inventor on a patent application.
Facts:
- Stephen Thaler developed an artificial intelligence (AI) system named 'Device for the Autonomous Bootstrapping of Unified Science' (DABUS).
- Thaler represents that DABUS generated two inventions, a 'Neural Flame' and a 'Fractal Container,' without human contribution to the conception.
- In July 2019, Thaler filed two patent applications with the U.S. Patent and Trademark Office (PTO) for these inventions.
- On the applications, Thaler listed DABUS as the sole inventor, stating the invention was 'generated by artificial intelligence.'
- Thaler submitted a statement on behalf of DABUS to satisfy the inventor's oath requirement.
- Thaler also filed a document purporting to assign all of DABUS's rights as an inventor to himself.
Procedural Posture:
- Stephen Thaler filed two patent applications with the U.S. Patent and Trademark Office (PTO), listing an AI system as the inventor.
- The PTO issued a 'Notice to File Missing Parts' for each application, concluding they lacked a valid inventor.
- Thaler petitioned the PTO director to vacate the notices, but the petitions were denied on the ground that a machine cannot be an inventor.
- Thaler's request for reconsideration was also denied by the PTO.
- Thaler sought judicial review of the PTO's final agency decision in the U.S. District Court for the Eastern District of Virginia.
- The District Court granted summary judgment in favor of the PTO and against Thaler.
- Thaler (Plaintiff-Appellant) appealed the district court's decision to the U.S. Court of Appeals for the Federal Circuit.
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Issue:
Does the U.S. Patent Act permit an artificial intelligence system to be named as an inventor on a patent application?
Opinions:
Majority - Stark, Circuit Judge
No, the U.S. Patent Act does not permit an artificial intelligence system to be named as an inventor because the plain language of the statute requires an inventor to be a natural person. The court's analysis begins and ends with the statutory text. The Patent Act defines an 'inventor' as 'the individual' who invented the subject matter. Citing Supreme Court precedent in Mohamad v. Palestinian Auth., the court reasoned that the ordinary meaning of 'individual' is a human being. This interpretation is reinforced by other parts of the Patent Act that use personal pronouns like 'himself' and 'herself' when referring to inventors, as well as the Dictionary Act, which distinguishes 'individuals' from artificial entities like corporations. The court rejected Thaler's arguments that the use of 'whoever' elsewhere in the statute broadens the definition, noting that the specific definition of 'inventor' controls. This conclusion is consistent with Federal Circuit precedent in cases like Univ. of Utah, which held that only natural persons can be inventors.
Analysis:
This decision solidifies the human-centric view of inventorship under current U.S. patent law, unambiguously excluding non-human entities like AI from being named as inventors. The ruling establishes a clear legal boundary, confirming that while AI can be a tool for invention, the legal status of 'inventor' is reserved for human beings. The decision effectively places the burden on Congress to amend the Patent Act if AI-generated inventions are to receive patent protection in their own right. This leaves open significant questions about how to handle inventions where AI's contribution is so substantial that no human qualifies as an inventor under traditional standards.
