Recently, a federal judge in the Eastern District of Virginia issued a memorandum opinion in the ongoing dispute over whether artificial intelligence (“AI”) machines may be properly identified as inventors on U.S. patent applications.  The court held that “the plain statutory language of the Patent Act and Federal Circuit authority” clearly specifies that inventorship for purposes of U.S. patent applications is limited to natural persons.

The case arises from an appeal filed by Stephen Thaler and his legal team concerning the U.S. Patent and Trademark Office’s (“USPTO”) treatment of U.S. Patent Application Nos. 16/524,350 (“the ‘350 Application”) and 16/524,532 (“the ‘532 Application”).  Thaler is the creator of an artificial intelligence machine known as “Device for Autonomous Bootstrapping of Unified Sentience” aka “DABUS.  An Application Data Sheet (“ADS”) was filed in each case identifying a single inventor with the given name “DABUS” and a family name “Invention generated by artificial intelligence”.^[1]  The ADSs also identify Stephen Thaler as the Applicant and Assignee.  In both cases, the USPTO responded by issuing a Notice to File Missing Parts of Nonprovisional Patent Application (“the Notice”) and asserted that the ADS did not identify each inventor by his legal name.^[2]  A subsequent petition to request supervisory review of the Notice and vacate the Notice was then filed by Thaler and dismissed by the USPTO.^[3]  Thaler then appealed to the U.S. District Court for the Eastern District of Virginia seeking, among other things, a reversal of the USPTO’s decision on the petition.

In her opinion, Judge Leonie Brinkema held that USPTO’s treatment of the ‘350 Application and the ‘532 Application was not inconsistent with the Patent Act or with applicable case law and was, accordingly, entitled to deference under the Supreme Court’s decision in Skidmore v. Swift & Co.^[4]  Additionally, it was held that, even if no deference were due, Congress’ use of the term “individual” in the Patent Act unambiguously refers to a natural person.^[5]

The court also dismissed the plaintiff’s policy-based arguments that allowing AI inventors would encourage innovation and promote disclosure of new technologies on the grounds that the plaintiff provided “no support that these policy considerations should override the plain meaning of a statutory term.”^[6]  The court acknowledged that there could come a time when AI meets the “accepted meaning of inventorship”; however, the court noted that it will be “up to Congress” to decide if and how to expand the scope of permissible inventors.^[7]

^[1] Complaint for Declaratory and Injunctive Relief at 4, Stephen Thaler v. Iancu, No. 1:20-cv-00903 (E.D. Va. Aug. 6, 2020).

^[2] Id. at 5.

^[3] Id. at 5.

^[4] Memorandum Opinion at 8-9, Thaler v. Hirschfeld, No. 1:20-cv-00903 (E.D. Va., Sept. 2, 2021).

^[5] Id. at 14.

^[6] Id. at 15.

^[7] Id. at 18.