by Dennis Crouch
Thaler v. Hirshfeld, App No. 21-02347 (Fed. Cir. 2022)
Prof. Ryan Abbott continues to push Thaler’s case on a global basis. Thaler created an AI system that he calls DABUS. DABUS created two separate inventions — a “Neural Flame” and “Fractal Container.” Thaler filed for patent protection, but refused to name himself as the inventor — although he created DABUS, these particular inventions did not originate in his mind. The USPTO rejected the applications — explaining US patents must name a human inventor. Now the case is pending before the Federal Circuit. The reality here is that Thaler could have claimed to be the inventor and the PTO would not have blinked-an-eye; and no other person or entity would have standing to challenge that result. In a forthcoming article, I argue that the PTO’s don’t-ask-don’t-tell approach is a truly problematic legal fiction. And, Thaler’s refusal to comply provides helpful exposure to the hypocrisy.
After being refused a patent, Thaler sued in district court, but the district court sided with the PTO and dismissed the case on summary judgment. Now the appeal to the Federal Circuit. Thaler argues:
The USPTO does not accept than an AI can be an “inventor.” This holding is simply inconsistent with the Patent Act’s plain language, Congressional intent, and the Constitution. The District Court improperly endorsed an interpretation of the Patent Act that, for the first time, excludes an entire category of innovation from patent law protection. The result of which will be to discourage innovation, limit
disclosure of trade secrets, and restrict commercialization of new products.
Thaler Brief. The argument begins with an analysis of the Patent Act: (1) nothing in the Act actually requires human inventors; and (2) nothing in the Act requires “conception.” Rather, the design of the system is to create an open incentive field to generally encourage innovation, disclosure, and commercialization. Barring AI-created inventions from the patent sphere discourages each of these goals of the patent system.
One catch to the Thaler argument in the US is that the 2011 America Invents Act included a new definition of the term “inventor” that requires the inventor be an “individual” and required submission of a inventorship declaration from “each individual who is the inventor or joint inventor.” 35 U.S.C. §§ 100, 115. The statute also provides a binary gender identification for inventors: “himself or herself.” These changes suggest a human-inventor requirement, but there are also a number of cases interpreting “individual” to include non-human persons. In addition, the law allows for a substitute declaration in cases where the inventor is legally incapacitated. In this case, Thaler submitted that substitute declaration on behalf of DABUS.
Briefing appears complete in the case, and oral arguments will likely be scheduled for sometime this summer.
Briefs filed in the case:
- Thaler – Opening Brief
- Thaler – USPTO Response
- Thaler – Reply Brief
- Thaler – Apper Amicus (Against Patenting by AI)
- Thaler – Appendix (this includes one of the disclosures and also the prior decisions in the case).
Cartoon adapted from Peter Steiner’s famous work originally published in The New Yorker in 1993.