The increase in AI-related patent filings in the past few years has given rise to unique questions about the current patent system. In particular, the question of whether an AI system can or should be named as an inventor on a patent application has been at the forefront of issues raised by the United States Patent and Trademark Office (USPTO) and the World Intellectual Property Office (WIPO) in their requests for comment on AI patents (see our first and second article). Last week, in a decision refusing to vacate a Notice to File Missing Parts issued in U.S. Patent Application No. 16/524,350 (the ’350 Application), the USPTO made clear that an AI system cannot be named as an inventor in a patent application.
The ’350 Application, titled “Devices and Methods for Attracting Enhanced Attention,” named an AI system as the sole inventor, listing “DABUS” as the inventor’s given name and “Invention generated by artificial intelligence” as the family name. The ’350 Application lists Stephen L. Thaler as the Assignee, Applicant, and the Legal Representative. DABUS, short for “Device for the Autonomous Bootstrapping of Unified Sentience,” is an AI system developed by the Applicant. The Notice to Filing Missing Parts was issued by the USPTO for an alleged failure to “identify each inventor by his or her legal name” on the filing papers.
A petition was filed requesting that the Notice to File Missing Parts be vacated for being unwarranted and/or void because the invention of the ’350 Application was generated by DABUS, a “creativity machine” programmed as a series of neural networks that were trained using general information to create the invention. According to the Petitioner, DABUS recognized the novelty and salience of the invention, and was thus properly named as the inventor.
The USPTO, however, disagreed that the AI system satisfied the requirements for an inventor. In the issued decision, the USPTO stated that the language of Title 35 of the United States Code consistently refers to an inventor as a natural person. As examples, the USPTO pointed to the term “[w]hoever,” as recited in 35 § U.S.C. 101, and the use of pronouns “himself” and “herself” when referring to the “individual” who believes himself or herself to be the original inventor or an original joint inventor of a claimed invention, as recited in 35 § U.S.C. 115. In the USPTO’s view, broadly interpreting the term “inventor” to include machines “would contradict the plain reading of the patent statutes that refer to persons and individuals.”
The USPTO also pointed to cases decided by the U.S. Court of Appeals for the Federal Circuit to bolster the decision. In Univ. of Utah v. Max-Planck-Gesellschaft zur Förderung der Wissenschaften E.V., it was decided that a state could not be an inventor. Similarly, in Beech Aircraft Corp. v. EDO Corp., the Federal Circuit ruled that “inventorship” and corporate “ownership” differed in that “only natural persons can be inventors.” The underlying consideration in both cases was the notion that conception, which is regarded as the “touchstone of inventorship,”1 is a “mental act” and formed “in the mind of the inventor.” The USPTO reasoned that conception “must be performed by a natural person,” which would preclude machines from acting as inventors.
The decision issued in the ’350 Application makes clear that, in the U.S., an AI does not satisfy the definition of an inventor, and in turn cannot be named as such. In this respect, the USPTO appears to align with the positions of the European Patent Office (EPO) and the UK Intellectual Property Office (UKIPO). In January of 2020, the EPO and the UKIPO denied two patent applications listing DABUS as the inventor on the ground that an AI system is not a legal personality that can be listed as the inventor (see article).
This issue may be destined for review by the courts if the Petitioner appeals the USTPO decision. Given that AI has become a major player in innovation with advances in technology, it remains to be seen if the courts, or legislation by Congress, will take up the issue to address inventorship of inventions made using AI. In the meantime, however, only natural persons should be listed as inventors in an AI-related application in the United States.
1 Burroughs Wellcome Co. v. Barr Labs., Inc., 40 F.3d 1223 (Fed. Cir. 1994).