Can AI Qualify as an Inventor?  Court Says No: Artificial Intelligence Trends

Earlier this month, the U.S. District Court for the Eastern District of Virginia ruled that an artificial intelligence (AI) machine cannot qualify as an “inventor” under the Patent Act.

As reported in The National Law Review (with a hat tip to Sharon Nelson’s excellent Ride the Lightning blog for the original coverage), the decision in Thaler v. Hirshfeld will likely be appealed to the Federal Circuit.

Patent applicant Stephen Thaler and his AI system called DABUS (“Device for Autonomous Bootstrapping of Unified Sentience”) were the focus of the decision. Naming DABUS as an inventor of his applications, Thaler obtained a South African patent without debate, and successfully argued to an Australian court that the Australia Patents Act should have a flexible interpretation of “inventorship” to include AI, because such interpretation would promote innovation and further pharmaceutical research.


The USPTO, however, rejected Thaler’s application, concluding that an inventor must be a natural person under the Patent Act.  Thaler asked the U.S. District Court for the Eastern District of Virginia to vacate the USPTO’s decision and reinstate his patent application.

The Court, on motions for summary judgment, affirmed the USPTO’s determination that an inventor must be a natural person.  Focusing on the “plain language” of the 2011 America Invents Act, which provided “an explicit statutory definition for the term ‘inventor,’” the Court’s decision came down to the meaning of the word “individual.”

The Court found that meaning in a Supreme Court decision construing the term “individual” in the Torture Victim Protection Act (“TVPA”) to mean “natural person[].” Although concerning different subject matter than the Patent Act, the District Court applied the Supreme Court’s definition of “individual” because, like the TVPA, the Patent Act used the term “individual” in its “ordinary usage,” which was “to refer to a human being.” 35 U.S.C. § 115(b) references the “individual” as “himself or herself,” which the Court found evidenced Congress’s clear intent to “referenc[e] a natural person.” Further supporting this interpretation, according to the Court, were the Federal Circuit’s “consistent holdings” (though in a different context) that “inventors must be natural persons.”

Thaler warned, “excluding an entire class of inventions from patentability would undermine the patent system,” as AI-generated inventions may “one day become the primary source of innovation.”  The Court was not swayed by these arguments, which the Court characterized as based in policy, rather than law.  According to the Court, Thaler’s positions could not “override the plain meaning of a statutory term,” and in any event, “[m]atters of policy are for Congress, not the courts, to decide.”  Had Congress intended AI systems to be considered “inventors,” the Court found, Congress could have explicitly included AI systems in the definition, added in 2011, “when artificial intelligence was already in existence.”

A copy of the ruling is available here and, as noted by the probable appeal above, we probably haven’t heard the last of this issue, especially after South Africa and Australia approved it.

So, what do you think?  Do you think that AI machines should be able to qualify as inventors?  Please share any comments you might have or if you’d like to know more about a particular topic.

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