Artificial Intelligence, technologyThe question of who, or rather what, can be an inventor has taken a front-row seat as use of Artificial Intelligence (AI) becomes increasingly prominent in research and innovation. On April 22, 2020, the United States Patent and Trademark Office (USPTO) issued a decision stating that inventorship under U.S. patent law is limited to natural persons and rejecting an application for an invention by DABUS, an AI machine. We review the reasoning behind this decision, its relation to decisions in other jurisdictions, and some implications of this outcome.

In the filed application,[1] the transmittal documents listed the sole inventor’s given name as “DABUS” and the family name as “Invention generated by artificial intelligence.” At the time of filing, Stephen Thaler, the individual who submitted the patent application, explained to the USPTO that DABUS conceived the invention through use of trained neural networks and without human intervention. The USPTO issued a document known as a “Notice to File Missing Parts,” indicating that the application failed to identify the inventor by his/her legal name. Thaler subsequently filed a petition requesting supervisory review of inventorship of the application in question. Thaler claimed that DABUS independently and autonomously created the claimed invention and that DABUS was not specifically trained in the relevant area of the invention. Accordingly, Thaler’s arguments continued, DABUS should be recognized as the inventor of the subject application.

The USPTO, through its decision, refused to vacate the issued Notice to File Missing Parts. The USPTO took the position that inventorship in the US is limited to natural persons. The wording used in relevant statutes provided the basis for this reasoning and the reasoning was supplemented by various Federal Circuit decisions in other non-patent contexts. The decision pointed out that statutes such as 35 U.S.C. §§ 100(f)-(g) and § 101 use words like “individual” and “whoever” in the context of inventorship, thereby implying natural persons. In addition, the decision pointed out that 35 U.S.C. § 115(b) requires that the oath or declaration be signed by an individual when that individual believes “himself or herself” to be an inventor of the claimed invention. Citing Univ. of Utah v. Max-Planck-Gesellschaft and Beech Aircraft Corp. v. EDO Corp., the USPTO found judicial reasoning to support the notion that conception of an invention relies upon mental processes, not simply any act of creation. It was also pointed out that the Manual of Patent Examining Procedure’s (MPEP) definition of “conception” in sections 2173.01 (II) and 2138.04 is consistent with these interpretations.

Thaler also filed patent applications in Europe and the United Kingdom, also attempting to identify DABUS as the inventor. Like the US, neither the European Patent Office (EPO) nor the UK Patent Office (UKIPO) has accepted DABUS as an inventor. The EPO’s primary concern seemed to be with the rights that accompany inventorship under a patent system – e.g., enforcement rights, transfer rights, etc. The EPO concluded that these accompanying rights require legal personality in order to be exercised, something that an AI machine lacks. Interestingly, the UKIPO unambiguously recognized DABUS as the creator of the claimed invention, but concluded that there was no legislative history or judicial interpretation to suggest that the laws were intended to allow AI machines to be inventors on a patent application.

While the question of whether an AI machine can be an inventor is certainly an interesting one, it is not the first time that intellectual property has intersected with issues of creation by non-humans. In Naruto v. Slater, the Court of Appeals for the 9th Circuit addressed questions of whether a monkey could bring a copyright infringement suit for photographs that the monkey allegedly authored. The Court concluded that while the monkey had constitutional standing to bring a copyright infringement suit as the alleged owner of the copyright, the Copyright Act did not authorize suits by animals, and thus the monkey had no statutory standing to bring such a suit. This result certainly resembles the outcome at the UKIPO described above, where it was determined that non-humans can create intellectual property, but lack the requisite personality to claim those rights.

While the USPTO has answered, rather unambiguously, whether non-humans can be listed as inventors on a patent application, a number of other questions are left open under US law. Can, as determined by the UKIPO, non-humans be recognized as the creators of inventions? Can a human who has a hand in training or building the AI models that created the invention file a patent application as a co-inventor? In such a scenario, would claims that are wholly or partially attributable to the outcome of the AI models have to be excluded if the AI model cannot be listed on the patent application as an inventor? 35 U.S.C. § 115(b) requires certification by a listed inventor that they are the original inventor or joint inventor of the claimed invention. Could a human inventor make this certification if they are listed as the sole inventor, but creation of the invention is at least partially attributable to an AI machine that is precluded from being listed as an inventor on the patent application?

These and other questions related to non-human creators of intellectual property are ones that patent offices, courts, and legislators might have to grapple with in the future. For now, however, we know that AI machines cannot be listed as inventors on US patent applications. Whether this could be changed legislatively, or whether the other issues surrounding AI and patent law will be answered, is yet to be seen.

[1] US patent application number 16/524,350 was filed on July 29, 2019, directed to “Devices and Methods for Attracting Enhanced Attention.”