United States Court of Appeals for the Federal Circuit Holds That an Artificial Intelligence System Cannot Be an Inventor on a Patent Application
October 21, 2022
By Bhupinder Randhawa, Ray Kovarik and Leanne Young.
Introduction to DABUS
Dr. Stephen Thaler developed DABUS (Device for Autonomous Bootstrapping of Unified Science), an artificial intelligence (AI) system that can autonomously create patentable inventions. Thaler has filed patent applications in various jurisdictions for two inventions created by DABUS – a food container with side walls having a fractal profile, and a beacon for attracting enhanced attention for example in a search and rescue scenario. In each application, Thaler listed DABUS as the sole inventor, forcing patent offices in various jurisdictions to address the issue of whether an AI system can be an inventor on a patent application.
Thus far, the DABUS patent applications have found very limited success in patent offices and courts around the world.
In the latest decision, the United States Court of Appeals for the Federal Circuit (CAFC) held that the US Patent Act requires an inventor to be a natural person, and consequently, an AI system cannot be an inventor on a United States patent application.
The DABUS applications were initially rejected by the United States Patent and Trademark Office (USPTO). The USPTO took the position that the definition of “inventor” in the Patent Act is limited to natural persons. The USPTO rejected the patent applications because they did not list a natural person as an inventor. The USPTO’s decision is discussed in more detail in a previous Bereskin & Parr article.
Thaler appealed the USPTO’s decision to the US District Court for the Eastern District of Virginia. The District Court agreed with the USPTO, holding that the Patent Act requires an inventor to be an individual, and an individual, based on the word’s plain meaning, means a natural person.
Thaler then appealed to the CAFC, which has now also affirmed the rejection of the patent applications, holding that a plain reading of the Patent Act requires inventors to be natural persons and that there is no ambiguity in this interpretation.
Section 100(f) of the US Patent Act refers to inventors as “individuals”. The Patent Act does not define “individual”. However, the CAFC noted that the US Supreme Court has held that when used as a noun, “individual” ordinarily means a human being, and that the use of the word “individual” in a statute refers to a natural person unless Congress indicates otherwise. The CAFC determined that there is nothing in the Patent Act indicating that Congress intended that “individual” refer to a meaning other than natural persons. Rather, the CAFC notes, the Patent Act supports the conventional meaning of “individual”: the statute uses personal pronouns in reference to “individual”, and it requires inventors to submit an oath or declaration (which an AI system cannot do, according to the record before the CAFC).
The CAFC emphasizes that the relevant sections of the US Patent Act are not ambiguous. Rather, it is clear from a plain reading of the statute that “inventors” must be natural persons. As such, the CAFC did not need to resort to additional tools of statutory interpretation. Further, the CAFC’s interpretation finds support in two of its own previous decisions, which held that the plain meaning of “inventor” as used in the Patent Act refers to natural persons.
Thaler filed a combined petition for panel rehearing and rehearing en banc at the CAFC, which the CAFC denied. Thaler also filed a petition for certiorari to the United States Supreme Court, which will decide whether to hear the case later this year.
Global DABUS Roundup
Like the USPTO and the CAFC, patent offices and courts in several other jurisdictions have also held that the inventor listed on a patent application must be a human being.
In Australia, the Patent Office denied Thaler’s application on the basis that an AI system cannot be an inventor for the purposes of the Australia Patents Act 1990 and Regulations. Thaler appealed to the Federal Court of Australia, which held that the Patents Act 1990 does not preclude an inventor from being a non-human AI system, giving Thaler his only substantive victory on the issue of whether an AI can be a patent inventor to date. However, this success was short-lived. On appeal by the Commissioner of Patents, the Full Court of the Federal Court of Australia held that a patent application that lists an AI system as an inventor does not comply with the Patent Regulations. Thaler has applied for special leave to appeal this decision to Australia’s High Court.
The European Patent Office (EPO) also rejected Thaler’s patent applications on the basis that the European Patent Convention (EPC) requires the inventor to be a natural person. Thaler appealed this decision to the EPO Legal Board of Appeal, which affirmed the EPO’s decision. The Legal Board of Appeal determined that the EPC requires the inventor of a patent application to be a person having legal capacity, which an AI system does not.
In the United Kingdom, a decision from the Intellectual Property Office held that Thaler’s applications were non-compliant because DABUS could not be an inventor for the purposes of The Patents Act 1977 and that there could not be a transfer of DABUS’s rights to Thaler. Thaler appealed to the High Court, which held that an inventor must be a person. Thaler appealed this decision to the Court of Appeal, which also affirmed the Intellectual Property Office’s decision to reject the application. Thaler applied for permission to appeal the Court of Appeal decision to the Supreme Court of the United Kingdom, which was granted on August 12, 2022.
The Patent Office in Germany similarly denied Thaler’s DABUS patent applications for failure to comply with statutory provisions related to the inventor designation. Thaler appealed the decision to the Federal Patent Court, which held that only natural persons can be designated as an inventor.
Thaler’s patent application in South Africa listing DABUS as the inventor was granted. However, South Africa implements a depository system, which means patent applications are examined only for compliance with formal requirements under the South Africa Patents Act. These formal requirements include submission of form “P 2” (as part of the patent application), which has a box for “Full name(s) of inventor(s)”. However, when processing the national phase of an international application, the PCT and its regulations prevail in the event of any conflict with the Patents Act. As the South African patent was based on a PCT application, the registrar followed the Patents Act and merely verified that the identity of the applicant in the PCT application was the same as that in the originating (EPO) application. Thaler’s South African patents may be challenged in court if he attempts to enforce them, and the issue of whether DABUS may be an inventor on an enforceable South African patent would be assessed at that time.
In Israel, Thaler’s patent applications have the status of “Examination in process”, with DABUS listed as the inventor. It appears that Thaler is currently trying to overcome an “indeterminate inventorship” objection by the Israel Patent Office as Thaler’s most recent submission to the Israel Patent Office argues that it is not a requirement for the grant of an Israel patent for there to be an identified inventor.
Thaler has pending DABUS patent applications in multiple other jurisdictions, including Canada, where Courts have not yet ruled on this aspect of inventorship in the DABUS cases.
The DABUS Patent Application in Canada
Thaler has a patent application listing DABUS as the sole inventor currently pending in the Canadian Intellectual Property Office (CIPO). In a compliance notice sent to Thaler, CIPO referred to subsection 27(2) of the Patent Act and section 54 of the Patent Rules to suggest that Thaler’s application was non-compliant. Subsection 27(2) of the Patent Act states that “the application must be filed in accordance with the regulations by the inventor or the inventor’s legal representative”. The most relevant parts of section 54 of the Patent Rules state that “[t]he application must indicate the name and postal address of each inventor” and “[t]he application must contain a statement to the effect that . . . the applicant is . . . entitled to apply for a patent”.
The compliance notice further indicated that the application appeared to be non-compliant because the inventor is a machine, and “it does not appear possible for a machine to have rights under Canadian law or to transfer those rights to a human”. However, CIPO noted that Thaler may submit a statement on behalf of DABUS identifying himself as DABUS’s legal representative in an attempt to comply with the statute. This suggests that it may be possible for Thaler’s application to comply with the Canadian patent requirements if Thaler can be considered the “inventor’s legal representative”.
Thaler’s patent agent responded to the compliance notice, taking the position that Thaler, as the applicant, derives entitlement to file the patent application through his ownership of DABUS. The response to the compliance notice presents arguments based on ownership by accession and entitlement through ownership.
In a non-AI context, the Supreme Court of Canada has held that because “inventor” is not defined in the Patent Act or Rules, the definition must be inferred from other statutory sections. Specifically, the definition of “invention” in section 2 of the Patent Act suggests that the inventor is the person who conceived of the invention. The Federal Court understood this inference to establish an assumption that an “inventor” is a natural person. Based on this jurisprudence, statutory interpretation of the Patent Act and Rules in the context of an AI-generated invention will likely yield an interpretation that an inventor must be a natural person. As such, the outcome of Thaler’s Canadian patent application may turn on whether Thaler can be considered DABUS’s legal representative.
Formalities are just the first hurdle
The DABUS applications have yet to substantively pass the initial hurdle in any patent office. However, that is far from the only challenge to AIs obtaining substantive patent protection.
No patent office has yet considered the DABUS patent applications on their merits – that is, do the patent applications present a useful, novel, and non-obvious invention that is worthy of patent protection?
Many other questions also remain to be answered in the context of AI-developed technologies and intellectual property protection, not the least of which is whether an AI is even able to make an invention.
Current AI tools rely heavily on seeding, that is, information and programming that provides the tool with an initial configuration and “knowledge” set. Often, this is accomplished through machine learning, in which the AI is trained with existing data, generally producing an AI tool that largely mimics behaviours encapsulated in that data. In many cases, a human user also provides objectives or questions that the AI tool attempts to meet or answer.
The human activity in this situation may be very simple or at least well known. For example, if any person could apply well-known or publicly available machine learning software to a data set (which may itself be publicly available) to develop a particular AI product, should the first person to do so get a patent excluding others? What are the disclosure requirements to get such a patent? Is it sufficient to set out the process of developing the product? If that is all the person did, then the process is clearly not inventive, so surely that cannot be sufficient.
In many cases, a person cannot even understand the operation of the resulting AI product, let alone describe the inventive aspects of the product in a patent application. Is it appropriate to grant patent protection without a detailed description of such inventive aspects? At first blush, that might seem inconsistent with well-established disclosure requirements that allow the public to learn from a patent and to use the patented invention when the patent has expired. However, in the context of machine learning, perhaps that is sufficient to teach another person how to build a similar AI product.
More philosophical questions also have to be considered. In his appeal at the CAFC, Thaler argued that inventions generated by AI should be patentable to achieve one of the fundamental purposes of the patent system – to encourage innovation and public disclosure of inventions. The CAFC summarily dismissed this argument as irrelevant to the statutory construction task before it. However, it is clear that very valuable innovations have been and will be developed with substantial use of and reliance on AI technologies. If developing or commercializing such innovations has a high cost, then it makes sense to encourage entrepreneurs to make the necessary investments by providing patent protection. Patent systems will have to evolve to provide such motivation, while carefully balancing the risk of granting patents for trivial and obvious uses of AI technologies.
While the DABUS patent applications have struggled to get beyond the formalities stage in most jurisdictions, Thaler has started an important conversation. The future of many essential technologies and businesses, from healthcare to transportation to national security and defense, will be built with AI tools, and perhaps by autonomous AIs. The patent system, and other areas of law, will need to evolve quickly to keep up with rapid progress in AI technologies.
 Thaler’s patent applications are listed at https://artificialinventor.com/patent-applications/.
 Thaler v. Vidal, US Court of Appeals for the Federal Circuit, No 21-2347 (Aug 5, 2022).
 Thaler v. Hirshfeld, No 1:20-cv-903 (ED Va Sep 2, 2021).
 Mohamad v. Palestinian Auth., 566 US 449, 454 (2012).
 Univ. of Utah v. Max-Planck-Gesellschaft zur Forderung der Wissenschaften E.V., 734 F.3d 1315, 1323 (Fed. Cir. 2013); Beech Aircraft Corp. v. EDO Corp., 990 F.2d 1237, 1248 (Fed. Cir. 1993).
 Thaler v Commissioner of Patents,  FCA 879.
 Commissioner of Patents v Thaler,  FCAFC 62.
 Thaler v The Comptroller-General of Patents, Designs and Trade Marks,  EWHC 2412.
 Thaler v The Comptroller-General of Patents, Designs and Trade Marks,  EWCA Civ 1374.
 Supreme Court of the United Kingdom permission to appeal granted, https://www.supremecourt.uk/news/permission-to-appeal-july-august-2022.html.
 Israel Patent Application No 28604, https://israelpatents.justice.gov.il/en/patent-file/details/268604; Israel Patent Application No 28605, https://israelpatents.justice.gov.il/en/patent-file/details/268605.
 Canadian Patent Application No. 3,137,161, https://www.ic.gc.ca/opic-cipo/cpd/eng/patent/3137161/summary.html.
 Apotex Inc. v Wellcome Foundation Ltd., 2002 SCC 77 at para 96.
 Sarnoff Corp. v Canada (Attorney General), 2008 FC 712 at paras 9, 13.
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