In a recent decision, Thaler v. Vidal, 2022 WL 3130863 (Fed. Cir. Aug. 5, 2022), the U.S. Court of Appeals for the Federal Circuit held that only a human being – and not, as asserted in this case, an artificial intelligence – may be an “inventor” within the meaning of the Patent Act (Title 35 of the United States Code).
This case arose from the U.S. Patent and Trademark Office’s (USPTO) rejection of two patent applications listing an AI system – plaintiff Stephen Thaler’s “Device for the Autonomous Bootstrapping of Unified Science” a/k/a “DABUS” – as the applications’ “inventor.”
The court explained:
This case presents the question of who, or what, can be an inventor. Specifically, we are asked to decide if an artificial intelligence (AI) software system can be listed as the inventor on a patent application. At first, it might seem that resolving this issue would involve an abstract inquiry into the nature of invention or the rights, if any, of AI systems. In fact, however, we do not need to ponder these metaphysical matters. Instead, our task begins – and ends – with consideration of the applicable definition in the relevant statute.
The [USPTO] undertook the same analysis and concluded that the Patent Act defines “inventor” as limited to natural persons; that is, human beings. Accordingly, the PTO denied Stephen Thaler’s patent applications, which failed to list any human as an inventor. Thaler challenged that conclusion in the U.S. District Court for the Eastern District of Virginia, which agreed with the PTO and granted it summary judgment. We, too, conclude that the Patent Act requires an “inventor” to be a natural person and, therefore, affirm.
The Patent Act requires inventors to be “individuals.” While the statute does not define that term, the court held that the plain meaning of the statutory term “individuals” is “natural persons.”
In reaching this conclusion, the court cited, inter alia: U.S. Supreme Court precedent; the Dictionary Act, 1 U.S.C. § 1 (which refers to “individuals” distinctly relative to artificial entities, such as, e.g., corporations); 35 U.S.C. § 115(b)(2) (which uses personal pronouns “himself” and “herself,” but pointedly not “itself,” to refer to an “individual”); and its own precedent (such as case law stating that only individuals, and not corporations or sovereigns, may be an inventor).
Since the statute’s plain meaning was dispositive, the court did not see the need to employ additional tools of statutory construction, and accordingly affirmed the decision of the district court.