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 Certiorari. Only 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.  EWCA Civ 1374.
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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.
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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).