Post Authored By: Peter Danos
The Court of Appeals for the Federal Circuit (“CAFC”) recently issued a decision focusing on inventorship under the Patent Act. Specifically, the CAFC affirmed that a non-human device (“AI”) cannot qualify as an “inventor” under the plain text of the Patent Act.
Physicist Dr. Stephen Thaler (“Dr. Thaler”) developed a device for Autonomous Bootstrapping of Unified Science (“DABUS”), which Dr. Thaler described as “a collection of source code or programming and software program.” In July of 2019, Dr. Thaler filed U.S. Applications Nos. 16/524,350 and 16/524,532 (the “Applications”) with the United States Patent and Trademark Office (“USPTO”). The Applications listed DABUS as the sole inventor, as Dr. Thaler maintained that AI generated the Applications and that he himself did not conceive the inventions. The USPTO rejected the Applications because Dr. Thaler failed to list a legitimate inventor. Dr. Thaler appealed under the Administrative Procedure Act, wherein the parties agreed to have a district court adjudicate the claims. There, the United States District Court of Virginia denied Dr. Thaler’s request to reinstate his Applications and concluded that an “inventor” under the Patent Act must be an “individual” which is defined as a natural person. Dr. Theater subsequently appealed to the CAFC.
On appeal, Dr. Thaler argued that an “individual” under the Patent Act may include non-human entities and specifically pointed to the term “whoever” under 25 U.S.C. §§ 101 and 271. The CAFC quickly dismissed Dr. Thaler’s contentions, noting that under Section 101, a patent must satisfy the “conditions and requirements of” Title 35 of the U.S. Code (which, includes the underlying definition of “inventor”) and that under Section 271, the idea that a non-human may infringe on a patent right has no bearing on whether non-humans may also invent a patent.
Dr. Thaler next argued that by not allowing AI to qualify as inventors, patentability would depend on “the manner in which the invention was made,” conflicting with 35 U.S.C. § 103. The CAFC again dismissed Dr. Thaler’s assertion, explaining that the provision Dr. Thaler relied upon relates to “how an invention is made and does not trump a provision that specifically addresses who may be an inventor.” As a matter of policy, Dr. Thaler also argued that inventions generated by AI should be patentable “to encourage innovation and public disclosure.” The CAFC again disagreed, noting Dr. Thaler’s argument as “speculative and lack[ing] a basis in the text of the Patent Act …”. The CAFC narrowed the scope of its opinion by expressly declining to answer whether human-made inventions assisted by AI are eligible for patent protection.
Consequently, patent inventorship remains in the domain of human beings. But, as AI continues to develop and evolve, the ongoing debate of whether Congress should amend the Patent Act rages on and will undoubtedly re-surface.
About the Author:
Pantelis “Peter” Danos is a litigation associate at CROKE FAIRCHILD MORGAN & BERES, where where he works on a wide array of commercial matters.
Upon graduating from the University of Illinois Chicago School of Law, Peter clerked for the Honorable Charles P. Kocoras of the U.S. District Court for the Northern District of Illinois. Peter’s work clerking afforded him the opportunity to work on a broad range of matters, while giving him unique insight into effective litigation strategies across a broad spectrum of venues and forums. Peter then worked at an AM 200 law firm, where he continued to polish his litigation skills. In addition to his broad experiences, Peter also has extensive experience analyzing electrical and computer science technologies for complex intellectual property matters.
 Thaler v. Vidal, 43 F.4th 1207 (Fed. Cir. 2022).
 Section 101 provides that “[w]however invents or discovers any new and useful process, machine, manufacture, or composition of matter, or any new and useful improvement thereof, may obtain a patent therefor, subject to the conditions and requirements of this title.”
 Section 271, in setting out what constitutes infringement, repeatedly uses “whoever” to include corporations and other non-human entities.
 Section 103 provides that:
A patent for a claimed invention may not be obtained, notwithstanding that the claimed invention is not identically disclosed as set forth in section 102, if the differences between the claimed invention and the prior art are such that the claimed invention as a whole would have been obvious before the effective filing date of the claimed invention to a person having ordinary skill in the art to which the claimed invention pertains. Patentability shall not be negated by the manner in which the invention was made.