Federal Circuit Decision Casts Doubt on Availability of Patent Protection for Ai-generated Inventions

• Publication year: 2023

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Robert A. McFarlane and Rosanna W. Gan ^*

In this article, the authors discuss a recent federal circuit court decision holding that an artificial intelligence system cannot be named as an inventor on a U.S. patent.

The U.S. Court of Appeals for the Federal Circuit, in Thaler v. Vidal, ¹ has ruled that an artificial intelligence (AI) system cannot be named as an inventor on a U.S. patent. The court's decision stems from a straightforward interpretation of the relevant patent statutes. However, the ruling may make it difficult to obtain intellectual property protection for inventions generated by advanced AI systems.

Ordinarily, the person who conceives of an invention is permitted to file for patent protection and initially owns any resulting patent.

Thaler, however, creates a category of otherwise patentable inventions—those "conceived" independently by advanced AI systems—that now arguably have no qualified inventor and, therefore, may not be eligible for patenting.

Inventorship Springs from Conception

U.S. patent laws have "operated on the premise that rights in an invention belong to the inventor" since enactment of the earliest patent statutes in 1790. ² "Although much in intellectual property law has changed in the [230] years since the first Patent Act, the basic idea that inventors have the right to patent their inventions has not," ³ and the current patent statutes provide that "[w]hoever invents or discovers any new and useful process,

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machine, manufacture of composition of matter . . . may obtain a patent therefor." ⁴ Simply put, the ownership of a patent "springs from invention." ⁵

The "inventor" in patent law is the person or, in the case of joint inventors, the persons who "conceived" of the invention, ⁶ and conception is commonly referred to as the "touchstone of inventorship." ⁷ Conception is "the formation in the mind of the inventor, of a definite and permanent idea of the complete and operative invention, as it is [t]hereafter to be applied in practice." ⁸ Conception is completed when "only ordinary skill would be necessary to reduce invention to practice, without extensive research or experimentation." ⁹

"It is elementary that inventorship and ownership are separate issues," ¹⁰ and inventors are free to assign their rights in an invention to third parties. ¹¹ Consequently, "inventorship is a question of who actually invented the subject matter claimed in a patent" while ownership "is a question of who owns legal title to [that] subject matter . . . , patents having the attributes of personal property." ¹² "Thus, although others may acquire an interest in an invention, any such interest—as a general rule—must trace back to the inventor." ¹³

Case law has limited inventors to "natural persons." ¹⁴ As a result, corporations ordinarily obtain patent rights to the inventions of their employees through formal assignments based on or required by employment contracts. ¹⁵

If inventorship is limited to natural persons, what happens if an invention is "conceived" independently and entirely by an AI system and there is no natural person who was involved in the conception? Faced with this question, the Federal Circuit adhered to the case law holding that only natural persons can be named as inventors and categorically held that AI systems cannot be named inventors on U.S. patents. ¹⁶

While Thaler expressly avoided "metaphysical matters" regarding "the nature of invention or the rights, if any, of AI systems," ¹⁷ its impact on Al-generated subject matter is significant. A patent that does not name the correct inventor may be rendered invalid. ¹⁸ Indeed, the U.S. Patent and Trademark Office (USPTO) concluded that both of the patent applications in Thaler were incomplete because they lacked a valid inventor. ¹⁹

Consequently, under Thaler, otherwise patentable subject matter that is independently "conceived" by an AI system may be deemed to have no cognizable inventor and that no valid patent may be issued to claim it.

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Thaler Presented Inventions Created Solely by the AI System DABUS

Plaintiff-Appellant Stephen Thaler developed an AI system called "Device for the Autonomous Bootstrapping of Unified Science," referred to as "DABUS," that he contends generates patentable inventions. ²⁰ Thaler filed applications seeking patent protection for two of DABUS's purported creations. ²¹

The first application, called "Devices and Methods for Attracting Enhanced Attention," disclosed a light source that pulses at a frequency and fractal dimension that is allegedly highly noticeable to humans, which allows it to serve an effective emergency beacon because it can quickly draw a person's attention even in chaotic environments that have multiple random and distracting light sources. ²² The second application, called "Food Container," disclosed a design for a "fractal container" that can be used for storing food and bev-erages. ²³ Rather than being smooth like ordinary containers, the surface of the claimed container had a complex surface structure based on fractal geometry. ²⁴ The application explained that this novel construction provided several advantages over conventional packaging, including the ability to interlock containers such as soda bottles rather than having to tie them together with separate packaging elements such as a six-pack ring. ²⁵

Thaler asserted that the two claimed inventions were generated by DABUS, that Thaler did not contribute to their conception, and that any person having skill in the relevant arts could have taken DABUS's output and reduced the ideas set forth in the applications to practice. ²⁶ Moreover, the patent office did not challenge these assertions and Thaler's representations were taken as undisputed facts for purposes of the opinion. ²⁷ Based on this record, DABUS's conception of the claimed subject matter would have established its inventorship without controversy if DABUS was a natural person. But as DABUS is a machine, that was not the case.

The Parties' Arguments for and Against DABUS as a Named Inventor

While recognizing that prior cases held that inventors must be natural persons, Thaler argued that AI was "fundamentally different" from corporations and state sovereigns...