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CAFC Updates


By August 5, 2022March 7th, 2024No Comments

Thaler filed two patent applications listing his “Device for the Autonomous Bootstrapping of Unified Science” (DABUS) artificial intelligence (AI) software system as the sole inventor on both applications. The Patent Office (PTO) concluded both applications were incomplete in that they lacked a valid inventor and sent a “Notice to File Missing Parts of Nonprovisional Application” for each application and requested that Thaler identify valid inventors. In response, Thaler petitioned the PTO director to vacate the Notices, but the PTO denied the petitions on the ground that “a machine does not qualify as an inventor,” and on reconsideration, explained that inventors on a patent application must be natural persons. Thaler pursued judicial review of the PTO’s final decisions, and the district court granted the PTO’s motion for summary judgment concluding that an “inventor” under the Patent Act must be an “individual” and the plain meaning of “individual” as used in the statute is a natural person. Thaler appealed. Initially, the CAFC points out that the Patent Act expressly provides that inventors are “individuals” and the Supreme Court has held that, when used in statutes, the word “individual” refers to human beings unless there is “some indication Congress intended” a different reading. Thaler argues that, in setting out what constitutes infringement, 35 U.S.C. § 271 repeatedly uses “whoever” to include corporations and other non-human entities. The CAFC notes, however that the fact that non-humans may infringe patents does not tell us anything about whether non-humans may also be inventors of patents. Second, Thaler contends that AI software programs must qualify as inventors because otherwise patentability would depend on “the manner in which the invention was made” in contravention of 35 U.S.C. § 103. The CAFC notes that § 103 relates to how an invention is made and does not trump a provision that specifically addresses who may be an inventor. The CAFC also was unpersuaded by Thaler’s arguments that: 1) inventions generated by AI should be patentable in order to encourage innovation and public disclosure; 2) permitting AI programs to be inventors would support the constitutional purpose of patents, and not recognizing AI as an inventor undermines raises constitutional concerns; and 3) South Africa has granted patents with DABUS as an inventor. The CAFC holds that Congress has determined that only a natural person can be an inventor, so AI cannot be. Accordingly, the decision of the district court is affirmed.

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