Artificial Intelligence & the U.S. Patent Act

AI is the simulation of human intelligence processes by machines, especially computer systems. Specific applications of AI include machine learning, deep learning, natural language processing, and speech and image recognition…

There are many definitions of Artificial intelligence (“AI”).  Stated simply, AI is the simulation of human intelligence processes by machines, especially computer systems. Specific applications of AI include machine learning, deep learning, natural language processing, and speech and image recognition.  In general, AI systems work by inputting large amounts of data, analyzing the data for correlations and patterns, and using these patterns to make predictions about future states. AI programming focuses on three cognitive skills: learning, reasoning and self-correction.

Discussion

In July 2019, Stephen Thaler sought to obtain patents for two inventions, one for a “Neural Frame,” and another for a “Fractal Container.” Thaler told the U.S. Patent and Trademark Office that these inventions were conceived not by him, but entirely by his “DABUS” AI device.[1]  The USPTO turned Thaler down on the basis that the inventor’s oaths submitted to the USPTO were submitted by Thaler on behalf of DABUS, and that a “machine does not qualify as an inventor.” In response, Thaler sought judicial review of the USPTO’s decision in the U.S. District Court for the Eastern District of Virginia. The District Court affirmed the USPTO decision, holding that an “inventor” under the Patent Act must be an “individual.”  Thaler appealed this ruling to the U.S. Court of Appeals for the Federal Circuit, which affirmed the decisions below, holding that under the U.S. Patent Act an inventor must be “a human being” not a computer. Thaler v. Vidal, Case No. 21-2347 (Fed. Cir. August 5, 2022)(“Thaler”).

The Federal Circuit’s decision began and ended, more or less, with an interpretation of the plain text of the Patent Act.  The Court did not delve into the specifics of the DABUS invention, nor did the Court rely heavily on the tools of statutory construction, stating that the language of the Act was clear and unambiguous.

The issue on appeal was whether the provisions of the Patent Act supported Thaler’s assertion that DABUS was a proper inventor within the meaning of the Act.  Looking to the language of specific provisions of the Patent Act pertaining to definitions, oaths, formalities, joint inventorship, prior art and infringement, the Court determined that the term “inventor(s)” means “individual(s).”  However, the term “individual(s)” is not defined in the Act.  As a result, the Court looked to the U.S. Supreme Court’s decision in Mohamad v. Palestinian Authority, 566 U.S. 449 (2012), which construed the term “individual” under the Torture Victim Protection Act of 1991, and held that “when used as a noun, ‘individual’ ordinarily means a human being, a person,” or a “natural person.”  The Federal Circuit also found that this construction of “individual” comports with its definition in the Oxford English Dictionary (2022).

Conclusion

The Federal Circuit explained that it was not deciding whether “an AI system can form beliefs.” Further, the Court indicated that it was not “confronted . . . with the question of whether inventions made by human beings with the assistance of AI are eligible for patent protection.”  But, they are most likely are. Finally, the Court noted that South Africa has granted patents with DABUS as an inventor, but stated “[t]his foreign patent office was not interpreting our Patent Act.”

If you have questions, please contact us

If you have any questions or if you would like to discuss the matter further, please contact me, Joseph Manak, or the Scarinci Hollenbeck attorney with whom you work, at 201-896-4100.

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[1] DABUS stands for Device for the Autonomous Bootstrapping of Unified Science.