All Inventors are Human; All Humans are Inventors

by Dennis Crouch

Petitioners in Thaler v. Vidal ask the Supreme Court one simple question:

Does the Patent Act categorically restrict the statutory term ‘inventor’ to human beings alone?

Thaler Petition for Writ of CertiorariOnly a court with substantial hubris would be willing to take-on this case, but I’m confident that the Supreme Court is up for the task.

The power of AI tools has become viscerally apparent over the past few months and hopefully members of the court have been shown chatGPT or some other generative AI tools that are now widely available (if still quite flawed).  We are are now at a point where it is easy to see an AI tool creating inventive output. And, even if recognition of the invention is fundamental to the inventing process, the AI tools certainly provide sufficient contribution to be considered for joint inventorship.

In general, we take an objective approach to patentability focusing on whether the result is a substantial step beyond what was known before and looking for objective evidence within the patent document of sufficient disclosure.  Some early 20th century courts had alluded to a potential subjective test, but Congress rejected that in the 1952 Patent Act, writing that “Patentability shall not be negatived by the manner in which the invention was made.”  35 U.S.C. 103.  The basic idea here is that we have a public policy goal of encouraging innovation and invention, “promot[ing] the Progress of Science and useful Arts.”  And Congress concluded that a key way to get results is to reward results.

In Thaler’s case, the PTO and courts short-circuited the patentability analysis because the purported inventor is a machine, and machines simply are not permitted to be inventors.

The pending case involves a human named Thaler (Dr. Stephen Thaler) who created an “imagination engine” named DABUS.  According to thus-far undisputed allegations, DABUS created two inventions and also recognized their utility without any specific guidance from a human.  In Thaler’s view, DABUS was the inventor since it was the “individual . . . who invented or discovered the subject matter of the invention.” 35 USC 100(f).   But, the USPTO refused to award a patent because the listed inventor was inhuman.

On appeal, the Federal Circuit affirmed — holding that the word “individual” found in 100(f) was properly interpreted as applying only to humans.  One oddity of this conclusion is that definition was added in 2011 as part of the America Invents Act, and without any suggestion on record that the amendment was intended to exclude robots or non-humans.

Thaler’s new petition asks the U.S. Supreme Court to take up the case and so some simple statutory interpretation of the word “individual” in context of Section 100(f) and (g).  According to Thaler, the statute is designed to focus attention on the entity that actually does the inventing and does not limit its scope to “humans” or “natural persons,” the common mechanisms used by Congress.

Professor Ryan Abbot has been Counsel of Record for Thaler throughout the case.  Thaler added Mark Davies and his Orrick team for this petition.  Earlier in March, the UK Supreme Court heard oral arguments regarding the UK version of the patent, asking whether “section 13(2)(a) of the Patents Act 1977 (the “1977 Act”) require a person to be named as the inventor in all cases, including where the applicant believes the invention was created by an AI machine in the absence of a traditional human inventor?”  The UKIPO Comptroller-General refused the application and that decision was affirmed on appeal. [2021] EWCA Civ 1374.

= = =

Assuming Thaler loses here, the unsatisfying solution appears to be that the owner or user of the AI will simply be claiming rights as the constructive inventor.  Thaler has a pending application in the EPO suggesting himself as the inventor as owner of DABUS. This approach substantially stretches the law of inventorship.  In the U.S., limitations on challenging inventors mean that many inventive entities can de facto stretch the notion of inventorship without getting caught.

= = =

If you are interested in supporting Thaler’s position, brief in support will be in about 30-days. (Depending upon the docket date, that has not been released yet).

58 thoughts on “All Inventors are Human; All Humans are Inventors

  1. 11

    “that definition was added in 2011 as part of the America Invents Act, and without any suggestion on record that the amendment was intended to exclude robots or non-humans”

    [Checks canons of construction list.] Yeah that checks out.

    Wouldn’t want to have to actually go through a legislature to get laws changed, would we? No, let’s have academics manufacture pet-project lawsuits instead.

    Where do I sign up to oppose Abbott’s–I MEAN THALER’s petition, again?

    1. 11.1

      DC: “without any suggestion on record that the amendment was intended to exclude robots or non-humans”

      Was the ridiculous idea that robots or non-humans would be applying for or entitled to patents raised even ONCE at any time during any US legislative hearing relating to patent law?

      Assuming the answer is “no”, that is some hilarious stuff right there.

      1. 11.1.1

        It is less hilarious than you portray, as the only reason it is mentioned in this context is that someone attempted to use it as an affirmative statement to its contrapositive.

        And yes, your animus is once again on display, as you would gladly accept the error of the original assertion, yet jump all over the (more innocent, even if same degree of error) reply.

        I chalk this up to the massive amount of cognitive dissonance you must suffer from given your clear detesting of the work product (patents) that you have in the last claimed to generate (as a patent attorney).

        You likely
        H
        A
        T
        E
        every day of your professional existence, your clients, and your very own work product.

  2. 10

    If I recall correctly, Thaler has never been able or willing to disclose exactly how his DABUS does its inventing. Instead he provides a hand waiving explanation of sorts that doesn’t enable anyone to make and use his invention (or DABUS’s invention). So there is no right for Thaler or DABUS to receive a patent. There’s no reason for the court to try answering his question because his question, though interesting, is beside the point that no patent can ever issue on his patent application. Thaler has chosen a faulty patent application for attempting to get US courts to establish a right that Congress hasn’t established.

    1. 10.1

      Perhaps it would be more helpful for a legal discussion if you do not confuse and conflate ‘wants’ and legal requirements.

      If I recall correctly, Thaler has never been able or willing to disclose exactly how his DABUS does its inventing.

      An absolutely legally nonsensical statement.

      Instead he provides a hand waiving explanation of sorts that doesn’t enable anyone to make and use his invention (or DABUS’s invention).

      This is actually a separate and distinct legal point — which every application will and must be evaluated under.

      It is also a legal point NOT at point with the legal issue at hand.

      In other words, even if you are correct in THIS case, and the particular example would
      F
      A
      I
      L
      that later and different legal test, such is simply separate from the issue at point.

      Your “is beside the point that no patent can ever issue on his patent application.” is a type of Ends Justifies the Means fallacy.

      Given the extensive size of industry effort, this type of Stick-Your-Head-In-The-Sand is decidedly unhelpful.

      Lastly, I am not sure that you fully grasp what it would take for Congress to permit what Thaler seeks.

      As stated elsewhere:

      “There is a clear position here that the delegation of authority to Congress is not in fact unlimited.

      That delegation (at our Nation’s founding) comes with the Lockean nature and understanding of the words chosen for that delegation.

      The foundational aspect of Quid Pro Quo is to turn a real person’s inchoate right (a real person’s possession) into a basket of real personal property legal rights.

      This foundation is at a Constitutional level.

      Could Congress ‘just change the words of law?

      Perhaps — but THAT action would NOT be merely your standard legislative action, but instead would need be a Constitutional amendment going to the delegation of authority.”

      See link to ipwatchdog.com

      1. 10.1.1

        “our Nation’s founding”

        So confused you are, but nobody will tell you this, mostly 🙂
        Global Senior Management is not pleased, Jenny.

        1. 10.1.1.1

          No Chrissy, you do not get to flip this upside down and I have no confusion.

          Your notion of “Global Senior Management” should NOT be pleased precisely because I am NOT confused — my point about the foundations of this country is — and should be — a bulwark against that unelected ‘Elitist’ power-mongering wanna-be world controllers (world leaders does just too much injustice to the word ‘leaders’).

    2. 10.2

      Yep…first let’s have Thaler show facts supporting DABUS’ unaided conception of the invention and the subsequent reduction to practice.

      Then we can have a philosophical discussion of whether or not an AI can be an inventor.

  3. 8

    it is false to say that “DABUS” creates inventions without guidance form humans. DABUS is following an algorithm written by humans. Without humans, DABUS would not exist.

    1. 8.1

      Your view suffers a deep fallacy — but one easily resolved.

      For any given invention, figure out who (or what) satisfies the legal technical definition of being an inventor.

      It is beyond clear that the front end builders, programmers and even guided trainers do NOT meet the legal technical definition of inventor.

      Do not confuse “inventor” with being the same as “who (or what) may legally receive a granted patent.

    2. 8.2

      I think it’s in contradistinction to systems that require guidance for each output, like ChatGPT or StableDiffusion or Midjourney. DABUS may have been programmed, but then once the switch is turned on, it (allegedly) cranks out new ideas without need for further or idea-specific input.

      1. 8.2.1

        “once the switch is turned on, it (allegedly) cranks out new ideas”

        Apparati in the past have “cranked” out and tested actual new molecules so … once again I fail to see why this issue of “who is the inventor, person or machine” seems so fresh to some people. It’s almost as if they don’t really believe their own b.s. but have some other agenda.

        1. 8.2.1.1

          ^^^ more purposeful MISinformation.

          I probably should give you the benefit of the doubt of you simply not understanding the technology at point, but you have B L O W N through any such grace with your purposeful 1gn0rance, so, “no benefit for you.”

  4. 7

    “Earlier in March, the UK Supreme Court heard oral arguments regarding the UK version of the patent, asking whether “section 13(2)(a) of the Patents Act 1977 (the “1977 Act”) require a person to be named as the inventor in all cases, including where the applicant sincerely believes that J e s u s C h r i s t, the One True Savior, came to him at night and whispered the new plans into his ear for the purpose of saving humanity from a future without the invention.”

    Deep, deep stuff! We must be so careful not to upset the believers because they are the most important and serious people on the planet.

    1. 7.1

      Excellent comment, Prophet. But instead of JC whispering the inventive concept into the ear of the chosen human being (Jo Soap), what we have these days is AI doing the whispering. Can JC make a better claim to inventorship than Jo can? Can AI? We await with interest.

      In particular, will AI engage Chat GPT (not as expensive as Dr Thaler) to plead on its behalf?

      1. 7.1.1

        You likely haven’t seen the case from California with someone suing an AI provider for unlawful practice of law…

        Truth may be stranger than fiction.

        1. 7.1.1.1

          “someone suing an AI provider for unlawful practice of law”

          There’s nothing “strange” about this.

    2. 7.2

      I believe that Belphegor is generally recognized as the demon that provides inventive concepts to humans.

  5. 6

    Dennis Crouch, always born yesterday: “ We are are now at a point where it is easy to see an AI tool creating inventive output”

    So? Non-humans (animals and machines) have created or discovered new things and new processes since forever. Why is this different?

    Answer: It’s not.

    Thaler is just especially cr e e py and Dennis is just especially enamored of computers lately, probably because he or a relative has a specific monetary interest in promoting the latest greatest trend.

    Yawn.

    1. 6.1

      Dennis should have joined Gene in banning you years ago.

      You belong on Reddit, not PatentlyO.

        1. 6.1.1.1

          The best insult comics, (e.g. Trum p), produce multi-layered zingers.

          Like observing that Gene is fat and craves attention. Or that Ron is, and has, a Tiny D.

          Wouldn’t the question of an AI’s status as inventor be necessarily subordinate to the question of AI’s legal status as a person? If AI can’t collect a royalty or bring a lawsuit and conduct itself equitably, how can it invent?

          Since, as of now anyway, the owner or authorized user of the AI is the legal person in control of the AI at the time of invention, shouldn’t that person be the legal inventor regardless of any acts of the AI?

          1. 6.1.1.1.1

            “Wouldn’t the question of an AI’s status as inventor be necessarily subordinate to the question of AI’s legal status as a person? If AI can’t collect a royalty or bring a lawsuit and conduct itself equitably, how can it invent?

            Since, as of now anyway, the owner or authorized user of the AI is the legal person in control of the AI at the time of invention, shouldn’t that person be the legal inventor regardless of any acts of the AI?”

            But the owner didn’t conceive the invention, so while they can be the applicant, they can’t claim to be the inventor without committing perjury and fraud on the U.S.
            As to the question of an AI not being legally “a person”, and therefore not “an inventor”, you’re right, and there is precedent. In “Invention of a Slave”, 9 Op. Att.y Gen. 171 (1858), the Attorney General issued an opinion that a slave owner could not patent an invention by his slave, because neither he nor the slave could make the oath. See, e.g. link to lawreview.syr.edu

            So, similarly, the owner cannot patent the invention, as neither the owner nor the AI can make the required oath or declaration, because the AI is not a person.

            1. 6.1.1.1.1.1

              The slave as chattel speaks to their legal personhood, but not even the most committed raci st confederate could put forth that a slave was not a sentient creature.

              As the owner of the AI, ISTM that the AI’s output is the owner’s property, in all senses. Therefore, the AI’s conception is the owner’s conception. If we grant that a non-human may host a conception, how can we deny them other rights of personhood?

              To me, no human mind= no abstraction, no matter how well simulated one may be. For now, anyway.

              1. 6.1.1.1.1.1.1

                ^^^ yet more ‘wanting to do battle’ upon terrain you refuse to understand.

                Your notion of “owner therefor inventor” is beyond asinine.

              2. 6.1.1.1.1.1.2

                we grant that a non-human may host a conception, how can we deny them other rights of personhood?

                Oh, to have that “head pounding the wall” emoticon working…

              3. 6.1.1.1.1.1.3

                “not even the most committed raci st confederate could put forth that a slave was not a sentient creature.”

                I bet we could find one in just this thread. But regardless, sentience wasn’t the question. Horses are sentient, and they’re also chattel.

                1. “Horses are sentient, and they’re also chattel.”

                  It’s also unquestionably true that horses have NEVER been permitted to be LEGALLY recognized as “inventors” on any patent, in any patent system that ever existed. In part, that’s because horses can not “conceive” of what a legal framework for promoting scientific progress might look like, much less understand what would constitute a viable creation that would qualify for a patent within that framework.

                  And guess what: there’s no computer that can do it either. If there is one, would the owner please ask it to define the term “ineligible abstraction” for the kids here who have such difficulty with the subject?

                2. “It’s also unquestionably true that horses have NEVER been permitted to be LEGALLY recognized as “inventors” on any patent, in any patent system that ever existed.”

                  That’s also true for black people in this country, prior to the 1860s. Maybe you’re on the wrong side of history on horse-inventors, Mal.

                3. I bet we could find one in just this thread.

                  Don’t be coy – share who you so think (and chances are pretty good that you would be likely wrong on this as well).

              4. 6.1.1.1.1.1.4

                >If we grant that a non-human may host a conception, how can we deny them other rights of personhood?

                Such as the right to the creative output of its mind.

                Put in more legal terms, how exactly did Thaler gain the rights to the (sentient) AI’s output? Is there a written work-for-hire agreement in place? Was guardian ad litem appointed to protect said AI’s interest wrt that agreement?

                If we’re going to grant the AI personhood, we can’t do that only where convenient…particularly given today’s zeitgeist, where the claim of “ownership” of another (sentient) entity is more likely to land one in jail than grant ownership of an inventive conception.

                1. As has been noted many times now, personhood is not a level required to address inventorship.

            2. 6.1.1.1.1.2

              “the owner didn’t conceive the invention”

              When a machine screens an array of chemicals for a particular property and a light comes on when the chemical is identified by the machine … do you believe that the owner of the machine never conceives of the chemical in question? Do you believe that the machine is the “inventor”?

              Look, these terms “conceive” and “invent” are LEGAL abstractions that are LEGALLY relevant relevant to human beings ONLY. It’s no different than the term “foreign country” or “US citizen.”

              In that regard, only humans can change the meaning of the terms. There is nothing — literally nothing — that a computer can do to change the meaning of those terms.

              The term “prior art” is another story as it has never mattered who (or what or how) published or otherwise “made public” the art in question before the critical date. What matters is that the art was dedicated to the public and therefore nobody gets to monopolize it for themselves.

              None of this is particularly difficult. Why make it so?

              1. 6.1.1.1.1.2.1

                Make it difficult? There I think that the UK legislator provides a good example, in writing into the 1977 UK patent statute a definition of “inventor” as being the “actual devisor” of the claimed subject matter.

                Like you, I see the notion of “conception” as something only a human brain is capable of. What Dennis calls “recognition” of the invention. But it might not be so easy to dismiss a future AI as the “devisor” of an embodiment of the claimed inventive concept.

                1. You really want to go there, MaxDrei?

                  UK’s “actual devisor”…?

                  That was an accepted given in that UK case that such was DABUS, was it not?

  6. 5

    The only interesting question left at this point is the does the gov’t bother filing a response. My bet would be no.

      1. 5.1.1

        OK, maybe I should have written “interesting” like this instead.

        What can I say? The bar for interesting here is already subterranean and might not even be finished descending yet.

        But, I really would be surprised if the gov’t filed a response voluntarily or the Court issued a CVSG.

        1. 5.1.1.1

          Some people seem REALLY interested, so much so that they are trying to make a Supreme Court case about it. That’s all that was ever “interesting” about this: what is the matter with those people and why are there lives that empty?Everything else is a sideshow.

          It was the same with Prometheus v Mayo. Does the patent act (or the Constitution) permit people to “own” methods of thinking “new thoughts” about data obtained by old methods? Golly, well, maybe if we just never state the obvious nobody will notice what we’re asking for. To its credit, the CAFC appears to have learned something in the intervening years.

          1. 5.1.1.1.1

            Also, note the irony of hiring actual humans from an actual human law firm to write the petition, instead of just having ChatGPT do it!

          2. 5.1.1.1.2

            Golly well Malcolm, do you want to (perpetually) move the goalposts to have claims entirely in the mind?

            Just more DISinformation from you…

  7. 4

    I don’t see why the Supreme Court would grant Cert when they would affirm the Federal Circuit 9-0.

    Maybe the issue itself peaks someone’s interest, but what more would they add to what is already in the Federal Circuit’s decision?

    1. 4.1

      Seems unlikely that the Supreme Court will grant cert for the reasons you state.

      The only wildcard is if there is some other motive related to other cases.

  8. 2

    Justice Thomas will take the case, ramble about how they need not define the bounds of “inventor” but they know it when they see it, and remand for further incomprehensible proceedings.

    1. 2.2

      Justice Thomas will take the case, ramble about how they need not define the bounds of “inventor” but they know it when they see it, and remand for further incomprehensible proceedings.

      Hardly. The conservative justices will say that inventor means what inventor meant in the constitution at the time of the founding, that the common law confirms women were considered mentally unequipped to be scientists, and that the patent act now only allows men to patent inventions.

      1. 2.2.1

        “The first patent, granted by the Princes of Florence to Filippo Brunelleschi in 1421, repeatedly refers to him as ‘a man’, and with the pronoun ‘he’, so clearly patents are intended only for men. This is further supported by the doctrine of coverture established in 1066. See also Dobbs v. Jackson Women’s Health Org, 597 U.S. __ (2022) (holding women to be chattel property, internal citations omitted).”

        1. 2.2.1.1

          But are any of their inventions chattel, or perhaps intellectual, property of their husbands (or lacking husband, father or nearest male relative)?

        2. 2.2.1.2

          Lol on the inclusion of Dobbs — which has no such actual gender bias.

          Maybe instead of being a Liberal Left Lemming, you learn to cogitate on your own.

          1. 2.2.1.2.1

            Lol on the inclusion of Dobbs — which has no such actual gender bias.

            haha yes both rich and poor are prohibited from sleeping on park benches.

  9. 1

    You cannot stop AIs from being inventors but you can prevent them from getting patents.

    Problem solved.

    Now, about using AIs to examine patent applications.

    Then to use AIs to decide PTAB cases.

    Then use AIs to decide patent cases in the District Courts because District Court judges know very little about patent law (or science and technology).

    Then use AIs to replace the CAFC judges because they keep screwing things up.

    So do the SCOTUS justices but they screw everything up.

    Then when AIs are completely running the courts they can decide whether AIs should be allowed to get patents.

    I have an idea. Ask an AI whether AIs should be allowed to get patents.

      1. 1.1.1

        Ask it to frame a response, first from one side of the fence, then from the other.

        Make it interesting and ask it to defeat the position of one side then the other.

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