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. [2021] 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).
Krzysztof Sywula’s story has some thematic elements of the Netflix Glass Onion show. As he tells it, Sywula was at the Santorini Island Grill with Alexis DaCosta & Vincent Coletti talking about creating an improved app for ride sharing. During one of the meetings, Sywula apparently sketched-out a diagram on a napkin that he gave to DaCosta and that eventually served as a basis for the patent filings in this case. The parties continued to work together for several more years with Sywula eventually becoming the CTO. Then came the patenting. Sywula was excluded from being listed as an inventor on the patents, including US11087250 and US11087252; and that was upsetting.
Sywula sued for correction of invention, and the District Court initially dismissed the case on standing, but – after an amended complaint – has now agreed that Sywula has met the requirements to survive a pleading-stage demurrer.
Standing to Sue: Federal Courts can only hear “actual cases or controversies.” U.S. Const., Art. III. The Supreme Court has massaged those words in to a three part standing requirement of (1) injury in fact that is actual, concrete and particularized; (2) a causal link between the challenged actions and the stated injury; and (3) identification of a likely mechanism for redressing the injury that is within the court’s power. These are often broken down to (1) injury-in-fact; (2) causation; and (3) redressability.
The First Problem — Assignment of Rights: Sywula signed a Consulting Agreement and an Invention Agreement, both of which promise to assign rights to DaCosta and Coletti or their newly formed company Teleport, including any inventions, trade secrets, discoveries, designs, software, etc., arising from his work on the endeavor. In patent law, inventorship is tied directly to ownership. An inventor is a presumptive owner of any resulting patent rights. However, those inchoate rights are assignable in a way that decouples inventorship and ownership. There result here is that Sywula is not suffering an ownership injury (or any other payment injury flowing from his failure to be named as an inventor). Sywula v. DaCosta, 21-CV-01450, 2022 WL 2959577 (S.D. Cal. July 26, 2022).
The Second Problem — Concrete Reputational Injury: After receiving this first rejection from the district court, Sywula reformed his complaint to claim a reputational injury due to his failure to be listed as an inventor. Here, courts have been somewhat clear that reputational-interest theory cannot be simply tied to a nebulous cloud. The District Court quotes my 2021 article explaining that courts refuse to find Article III standing based simply upon loss of “the dignity of and accompanying self-satisfaction of official inventorship recognition.” Dennis Crouch, Reattribution, The Poison Pill & Inventorship, 5 BUS. ENTREPRENEURSHIP & TAX L. REV. 138 (Fall 2021).
But, the district court concluded that Sywula had done enough to move from nebulous to concrete. In particular, Swyula’s pleading provide a sufficient showing that his career as a software engineer would have been boosted based if he had been properly listed as an inventor. This economic/pecuniary tie-in is what the Federal Circuit looked for in its key decision of Shukh v. Seagate Technology LLC, 803 F.3d 659 (Fed. Cir. 2015). The district court explains:
Sywula adequately pleads he sought employment in the field of his claimed invention. That is, Sywula, a software developer who purportedly architected, developed, and wrote the software for Teleport’s ride-sharing application, alleges he aspired to climb the hierarchical ladder for software developers and obtain a Principal Engineer role. Sywula also adequately pleads Teleport’s omission “affect[ed] his employment” by severely diminishing, if not foreclosing entirely, his opportunity for a promotion to Principal Engineer at Intel. Importantly, he alleges the prospects of his promotion from Software Engineer to Principal Engineer at Intel were not merely illusory or wishful thinking. He claims to have met nearly all of Intel’s experience-and skills-based criteria to be eligible for a promotion. However, he is missing one purportedly crucial qualification: he cannot claim to be an inventor of any patented technology. According to Sywula, “[p]ublished patents are usually required for software engineers to attain higher-ranked roles.” And Intel [his current employer], in particular, considers published patents as relevant to at least three qualities and skills it looks for in prospective Principal Engineers.
Simply put, the Second Amended Complaint contains enough factual material for this Court to infer Defendants’ withholding of inventorship credit in the Teleport patents plausibly diminished or even foreclosed his prospects of career-advancement at Intel and, more generally, in whatever software-developer position he holds or will hold. Hence, Defendants’ omission plausibly strips Sywula of the pecuniary benefits attendant to promotion. Accordingly, Sywula has adequately alleged an economic component to one of his reputational injuries.
Sywula v. Teleport Mobility, Inc., 21-CV-1450, 2023 WL 362504, at *16 (S.D. Cal. Jan. 23, 2023). In its analysis here, the court went somewhat light on the causation element — noting that it is enough that the reputational injury influenced his career trajectory without being the sole cause. The court also accepted a second justification for jurisdiction — Sywula’s failure to obtain a job as a software engineer at Apple could be partially attributed to the fact that he was not listed as an inventor.
In 2022, the Federal Circuit held that an invention is only eligible for a US patent if a human conceived of the invention. Thus, no patents for invention wholly conceived by artificial intelligence. Thaler v. Vidal, 43 F.4th 1207 (Fed. Cir. 2022). Thaler’s petition for writ of certiorari to the US Supreme Court would have been due last week, but Thaler was able to obtain an extension with the petition now being due March 19, 2023. Thaler’s main attorney throughout this process has been Professor Ryan Abbott. The team recently added appellate attorney and Supreme Court expert Mark Davies to the team, and so it should be a great filing when it comes. The motion for extension explains that the case presents a fundamental question of how the law of inventorship should apply “to new technological methods of invention.”
Specifically, this case arises from the Federal Circuit’s denial of a patent to an invention created by an artificial intelligence (AI) system, holding that an AI system is categorically unable to meet the definition of “inventor” under the Patent Act. The questions presented in Dr. Thaler’s petition will have a significant impact on Congress’s carefully balanced scheme for protecting the public interest in promoting innovation and ensuring the United States’ continued international leadership in the protection of intellectual property.
Extension Motion. Part of the justification for delay is that Dr. Thaler and his attorneys have a parallel copyright case pending. Thaler attempted to register a copyright for a computer-created work of art. But, the copyright office refused once Thaler expressly stated that there was no human author. Thaler then sued in DC District Court. Most recently, Thaler moved for summary judgment, presenting the following question for the district court to decide:
With the facts not in dispute, this case boils down to one novel legal question: Can someone register a copyright in a creative work made by an artificial intelligence? The plain language and purpose of the Copyright Act agree that such works should be copyrightable. In addition, standard property law principles of ownership, as well as the work-for-hire doctrine, apply to make Plaintiff Dr. Stephen Thaler the copyright’s owner.
THALER v. PERLMUTTER et al, Docket No. 1:22-cv-01564, Paper No. 16 (D.D.C. Jan 10, 2023). The image, reproduced below from the complaint is known as “A Recent Entrance to Paradise.” (Registration Application #1-7100387071).
In another recent example, the Copyright Office has also canceled copyright registration for Zarya of the Dawn, apparently because of its AI-created status.
Patents filed before March 2013 are examined using the pre-AIA rules of patentability, including 35 U.S.C. 102(f):
A person shall be entitled to a patent unless — (f) he did not himself invent the subject matter sought to be patented.
35 U.S.C. § 102(f). Under this old law, an accused infringer was able to assert a defense of invalidity if the issued patent fails to name the correct inventors.
In 2020 Plastipak sued its competitor Premium Waters for infringing a collection of twelve related patents covering the “neck finish” of a plastic bottle. The neck-portion is more costly and the inventions here generally allow for a reduced neck size while still including tamper-evident formations. Plastipak Packaging, Inc. v. Premium Waters, Inc. (W.D. Wis. Aug. 19, 2021) reversed on appeal in Plastipak Packaging, Inc. v. Premium Waters, Inc., — F.4th — (Fed. Cir. Dec. 19, 2022).
The patents list two inventors, Richard Darr and Edward Morgan. But, on summary judgment the district court concluded they should have listed a third inventor, Alessandro Falzoni. Usually it is no problem for a company to add additional inventors – even after the fact. Here, though Falzoni was not a Platipak employee or subject to any agreement to assign rights, and so shared inventorship would mean shared ownership with an industry competitor.
What happened: Falzoni designed an improved neck while working for his Italian packaging company SACMI. SACMI then proposed the design to various US parties, including Plastipak. As part of that process, Falzoni emailed a 3D model of the design to Darr. Darr responded with a finished drawing using the Falzoni model; and Falzoni found those drawings acceptable. Darr asked for SACMI exclusive rights to the design, but, the parties could not agree on a deal. Eventually, Plastipak ended up filing for its own patent rights and manufacturing using alternate sources.
Taking all this in, the district court concluded that Falzoni had contributed significantly to the claimed invention and therefore should have been listed as an inventor. Since he was not listed, the claims were all invalid. Plastipak Packaging, Inc. v. Premium Waters, Inc. (W.D. Wis. Aug. 19, 2021).
The figure above compares the Falzoni design with that found in Plastipak invention (Fig 2). The prior art being overcome is found in the middle (Fig 1).
In making its ruling, the district court focused on three primary factors: the “striking similarities” between Plastipak’s engineering drawings and the Falzoni design; the collaboration between Falzoni and Darr at arriving at the invention; and the financial motivation to exclude Falzoni that made an “honest mistake” unlikely.
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On appeal, the Federal Circuit has vacated, holding that the case was not quite as open-and-shut as the district court claimed. Although the evidence seems to suggest Falzoni is an inventor, the patentee has a right to a jury trial on this issue because there remain disputed issues of material fact. In particular, the size of the neck appears to be the critical improvement here, but the patentee raised disputes about the size of Falzoni’s proposed neck.
Ultimately, we agree with Premium Waters that it presented sufficient evidence from which a reasonable factfinder may find clear and convincing evidence that Falzoni was a joint inventor of the X Dimension Patents. Such a finding could be grounded in Falzoni’s testimony, as corroborated by the 3D model and the testimony of another SACMI employee, as well as the arguably suspicious timeline, in which the collapse of Plastipak’s efforts to license SACMI’s ML27 design was quickly followed by Darr and Morgan filing their patent application. Such a finding could lead to the conclusion that the X Dimension Patents are invalid for failure to name Falzoni as an inventor. Crucially, however, nothing in the record requires a reasonable factfinder – particularly one who is resolving all fact disputes, and drawing all reasonable inferences, in Plastipak’s favor – to make these necessary findings. Accordingly, summary judgment of invalidity is not warranted.
Slip Op.
The court goes on to hold that “overwhelming evidence” of joint inventorship is not necessarily enough for summary judgment. The question instead is whether a reasonable juror could find independent inventorship. The appellate court also noted that the district court erred in failing to believe the Plastipak testimony. While the appellate court appeared to agree that a Plastipak’s story of independent invention appeared concocted, the issue of credibility is for the jury to decide.
On remand, the case might still not get to a trial — the district court had not decided all of the summary judgment motions because it found this one dispositive.
Question for you: How do you think a court should handle a similar inventorship issue post-AIA?
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Christopher Dillon (Fish & Richardson) argued for the patentee Plastipak. Jeffrey Costakos (Foley & Lardner) represented Premium Waters. Both lawyers led their respective trial and appellate teams.
The chart below highlights an important trend in patenting: increased joint-inventorship where the inventors reside in different countries. The top (blue-circle) series looks generally at cross-border joint-inventing while the lower (orange-square) series reports a subset where at least one of the inventors has a US residence.
One important caveat here is that the inventor’s permanent residence does not necessarily mean that the inventors where physically distant since one or more inventors may have been temporarily on location. Further, residence is typically designated at the time the patent application is filed, and inventors may have moved in the interim between inventing and their US filing. The rise in cross-border inventing also correlates with the rise in joint inventorship. From 2005 to 2022, the average number of inventors per patent rose from 2.5 up to over 3. If we reach back to 1985, most US patents listed only one inventor. By 2005, only 37% of utility patents were single inventor endeavors. Today, the figure is down to 26%.
Almost all the briefs filed in Amgen v. Sanofi cite to the 1916 Supreme Court decision in Minerals Separation v. Hyde, 242 U.S. 261 (1916). It is an interesting little case that primarily focuses on obviousness (i.e., “invention”), but also touches upon inventorship and sufficiency of disclosure. In Amgen, the Supreme Court is tasked with reconsidering the law of enablement, and so it is this final issue that is most relevant.
Mined ore is typically a mixture of metals and various non-metallic gangue (often quartz). Although folks had figured out various ways to separate the two, the solutions were not yet cost effective. One form of separation was based upon the knowledge that certain oils tended to attach only to the metal. Various prior patents used this law of nature to either cause the metal to float to the top of a liquid mixture or otherwise sink to the bottom. But, those prior processes required a lot of oil; were not cost effective; and thus did not succeed in the marketplace. Our patentees in this case are a trio of London metallurgists who developed their own approach of “froth flotation.” They mixed in a very small amount of oil (0.5% of ore weight) into the powdered ore and then vigorously shook the mixture. The shaking caused the oil to form air bubbles that rose to the top in a froth form. And, because of the affinity between the oil and the metal, the metal power and flakes would line the surface of the frothed bubbles. U.S. Pat. No. 835,120 (1906).
On the enablement issue, although the patentee had conducted tests on various oils and acids; agitation levels; addition of heat; etc, it was also clear that the method required refining for each different type of ore. In particular, a user would need to conduct preliminary tests to figure out the amount of oil and level of agitation that works best. The patent itself admitted that “in the concentration of any particular ore a simple preliminary test is necessary to determine which oily substance yields the proportion of froth or scum desired.’’
The Supreme Court considered this issue, but found the disclosure sufficient.
The composition of ores varies infinitely, each one presenting its special problem, and it is obviously impossible to specify in a patent the precise treatment which would be most successful and economical in each case. The process is one for dealing with a large class of substances and the range of treatment within the terms of the claims, while leaving something to the skill of persons applying the invention, is clearly sufficiently definite to guide those skilled in the art to its successful application, as the evidence abundantly shows. This satisfies the law.
Minerals Separation, 242 U.S. at 270-271. In the same paragraph, the court also included a sentence on claim definiteness, using the same language of reasonable certainty that the Court later reiterated in Nautilus: “the certainty which the law requires in patents is not greater than is reasonable, having regard to their subject matter.”
The district court had also decided the case in favor of the patentee, concluding that “a range of quantities that leaves something to the judgment of the operator is all that can be described, and is sufficiently definite.” Minerals Separation v. Hyde, 207 F. 956 (D. Mont. 1913), rev’d, 214 F. 100 (9th Cir. 1914), rev’d, 242 U.S. 261 (1916). The issue does not appear to have been briefed to the Supreme Court, but the court addressed it anyway.
Both the District Court and the Supreme Court cite to Mowry v. Whitney, 81 U.S. 646 (1871). In that case, Justice William Strong explained that a patent is not awarded simply for the act of invention. Rather, the inventor must also “teach the public how to practice it.” Still, the court went on to explain that the specification is directed to those of skill in the art. Thus, disclosures insufficient the general public may still be sufficient to teach those already knowledgeable. “[I]t may leave something to their skill in applying the invention, but it should not mislead them.” Id. In Mowry, the court concluded that the patent was valid despite “vague and uncertain directions” as to the amount of heat to add as part of a casting process.
But it is obvious that only vague and uncertain directions could have been given respecting the extent to which the heat is necessary to be raised. It must differ with the difference in the progress of cooling which has taken place before the wheels are removed from the moulds. . . . That, in the nature of things, must be left to the judgment of the operator.
Id. In Minerals Separation, the Supreme Court also cited to Ives v. Hamilton, 92 U.S. 426 (1875). In Ives the patent introduced a mechanism to impart a rocking motion a reciprocal saw being used in a saw mill. The patentee used a “curved guide” but did not describe the exact nature of the curve. In the case, the Supreme Court sided with the patentee and found the disclosure sufficient:
The complaint made by the defendants, that the patent is defective in not stating the nature of the curve for the guides, whether that of a circle or of some other figure … [is] not sufficient to affect its validity. Any good mechanic acquainted with the construction of sawmills, and having the patent and diagram before him, would have no difficulty in adopting the improvement, and making suitable curves.
Id. The statutory text at the time was codified in R.S. Sec. 4888. The text is remarkably similar to the language found today in Section 112(a). It required the the patentee to file:
a written description of the [invention or discovery], and of the manner and process of making, constructing, compounding, and using it, in such full, clear, concise, and exact terms as to enable any person skilled in the art or science to which it appertains, or with which it is most nearly connected, to make, construct, compound, and use the same; and in case of a machine, he shall explain the principle thereof, and the best mode in which he has contemplated applying that principle, so as to distinguish it from other inventions; and he shall particularly point out and distinctly claim the part, improvement, or combination which he claims as his invention or discovery.
The new en banc petition in Thaler v. Vidal offers potential for future development on the law of invention and inventorship.
by Dennis Crouch
Hi, my name is Dennis, I am a natural person, a human being, an individual. But, I also think of myself as a collective–trillions of cells and other biologic matter, only some of which expresses “my” DNA; a host of personalities all housed within a thick skull.
In my view, it is unquestionable that AI regularly contribute to inventive concepts so substantially as to be named joint-inventors alongside their human counterparts, if it were permitted. Many of us are hung-up on the notion that inventorship requires “conception in the mind”–a feat perhaps beyond any computer today. But conception is not a requirement for joint inventorship. Cases like Dana-Farber v. Ono help us understand how it might work. In Dana-Farber case, some of the joint inventors (our AI equivalents) provided data and analysis, but then the actual “conception” was done by a third party after receiving the data inputs. Even though only one of the inventors actually “conceived,” the Federal Circuit held that all three should be listed as inventors because each made substantial contributions that led to the conception. Dana-Farber Cancer Inst., Inc. v. Ono Pharm. Co., Ltd., 964 F.3d 1365 (Fed. Cir. 2020). See Toshiko Takenaka, Unravelling Inventorship, 21 Chi.-Kent J. Intell. Prop. 71 (2022).
The key legal justification for excluding AI is the traditional human-only rule of inventorship. Although the Patent Act does not expressly declare “inventors-must-be-humans” or “no-robots,” since 2011 it has stated that inventors are “individuals.”
(f) The term “inventor” means the individual or, if a joint invention, the individuals collectively who invented or discovered the subject matter of the invention.
(g) The terms “joint inventor” and “coinventor” mean any 1 of the individuals who invented or discovered the subject matter of a joint invention.
35 U.S.C. § 100(f)/(g) (2011). Earlier this summer, the Federal Circuit sided against Dr. Stephen Thaler on this issue. Thaler v. Vidal, 43 F.4th 1207 (Fed. Cir. 2022). Thaler has been attempting to seek patent protection for two inventions created by DABUS, his AI computer. Id. In the case, the USPTO admitted (for the purposes of the litigation) that DABUS had conceived of an invention. Thus, the only question on appeal was whether the USPTO acted appropriately in denying patent protection solely based upon the fact that the purported inventor is non-human. Id.
The court sided with USPTO’s no-patent stance. It held that US Patent Laws require listing of an inventor, and that inventor must be a “natural person” — i.e., human being. Although the court cited several statutory justifications for its decision, the key factor came from the definitions found in 35 U.S.C. § 100 that identify inventors as “individuals.” The court concluded that the term “individual” is best interpreted as limited to a human being. Thaler, 43 F.4th at 1211. One quirk of this ruling is that this ‘individual’ definition was added quite recently as part of the 2011 America Invents Act and nothing in the legislative history indicates an intent to use the term to exclude AI from inventorship rolls.
Through his attorney (Professor Ryan Abbott), Thaler has now petitioned the Federal Circuit for en banc rehearing on the following question:
Whether an artificial intelligence can be an inventor for purposes of patent law, which implicates the most fundamental aspects of patent law, namely, the nature of inventorship and therefore whether AI discoveries can be patented.
Thaler en banc petition. The petition makes three key complaints against the petition, which I paraphrase below:
The panel selectively quoted from dictionaries for its conclusion that individuals are always human. The better definition of individual is a “distinct, indivisible entity”–a definition that would include an AI-inventor. I might ask, if an AI is not an individual, does that mean it is a collective?
The panel unduly disregard of the Patent Act’s promise of patent rights regardless of “the manner in which the invention was made” and without limiting eligibility scope only to areas contemplated by Congress. See 35 U.S.C. 103 (“Patentability shall not be negated by the manner in which the invention was made”); 35 U.S.C. 101 (“Whoever invents or discovers any new and useful process …”); Diamond v. Chakrabarty, 447 U. S. 303 (1980) (that the patent system allows for “inventions in areas not contemplated by Congress.”).
In the face of evolving technology that redefines the potential of inventorship, the panel failed to interpret the statute “in light of [the] basic purpose” of the Patent Act. Quoting Twentieth Century Music Corp. v. Aiken, 422 U.S. 151 (1975).
Id. In some ways, Judge Stark’s opinion reads like a district court applying the law handed-down rather than an appellate court with a larger role of considering meaning and importance of ongoing precedent. Perhaps this makes sense, Thaler was the first precedential opinion authored by Judge Stark’s since joining the Court of Appeals earlier in 2022. Judge Stark was previously a district court judge in Delaware for more than a decade.
I have always seen the final sentence of Section 103 as an important declaration of patent law policy that goes beyond simply obviousness doctrine. “Patentability shall not be negated by the manner in which the invention was made.” One particular bit of the Federal Circuit decision that gets in my craw is the court’s statement limiting that provision as only applicable in the obviousness context. In my view, the statement should be applicable in the Thaler analysis as well as in other contexts, such as patent eligibility. I’m planning a subsequent post that will focus more on this issue.
If my calculations are correct, any Amicus Brief in support of Thaler (or Support of Neither Party) would need to be filed by Oct 3 (absent extension).
The absence of a dissent in the original opinion makes the odds of overturning the panel decision quite low–Thaler would need seven of the remaining nine active judges (assuming that none of the original three change their minds). But, Thaler may still appreciate an outcome where one or two judges offer some additional commentary that would then serve as fodder for the upcoming petition for writ of certiorari.
A few years ago I read a great series of fantasy books, The Wandering Inn. A key series storyline involves the protagonist meeting with ant-like Antinium and, through their interactions, transforming some of more computer-like hive members into individuals. The word individual is important for U.S. Patent Law, because the U.S. Patent Act was amended in 2011 to expressly require that inventors be “individuals.” 35 U.S.C. § 100(f) (2022). For Antinium, becoming individual meant breaking away from the hive-mind. In its newest decision on the topic, the Federal Circuit declares instead, for the purposes of patent law, an inventor must be human.
Here, there is no ambiguity: the Patent Act requires that inventors must be natural persons; that is, human beings.
Thaler v. Vidal, 2021-2347, 2022 WL 3130863 (Fed. Cir. Aug. 5, 2022). In the case, Thaler claims to own a computer named DABUS, and that DABUS conceived-of two patentable inventions. But, Thaler refused to claim credit as the inventor. And, the USPTO refused to issue a patent without a listed human inventor.
In my mind, it was always clear that the Federal Circuit would refuse Thaler’s petition, but it remains a fascinating topic in my mind. American legal personhood continues to ingenerate debate well beyond AI, including the contexts of legal fictions such as corporations, pre-birth human, and even non-human organisms (such as rivers). The result here shuts-down the debate – at least for the patent law concept of inventorship.
Of all the arguments presented, I thought that Thaler’s best relied upon Section 103’s statement that patentability shall not depend upon “the manner in which the invention was
made.” Thaler argued that the PTO was, in fact, refusing to issue a patent because the invention was made by an AI rather than a human. On appeal, the Federal Circuit held that provision should be limited only to apply to the obviousness context. “Section 103 is not about inventorship. Instead, it provides, in relevant part, that inventions may still be nonobvious even if they are discovered during ‘routine’ testing or experimentation.” Slip Op.
The court went on to expressly explain that it is only interpreting the words given by Congress. If someone wants to change the rules, the correct path is through legislation. Thaler will petition to the Supreme Court, but is unlikely to win.
* Thanks to Avery Welker for helping with this post.
The United States Constitution was ratified in 1789. The following year, Congress passed the first patent act that was then signed-into law by President George Washington.
When the Patent Act of 1790 refers to inventors, it lists gender inclusive forms of “he, she, or they:”
[The inventor(s) must] set[] forth, that he, she, or they, hath or have invented or discovered any useful art, manufacture, engine, machine, or device, or any improvement therein…
Patent Act of 1790. Three years later, Congress substantially rewrote the statute and, at that time changed the pronouns. The new law eliminated the female pronoun “she.”
[The inventor(s)] shall allege that he or they have invented any new and useful art, machine, manufacture or composition of matter, or any new and useful improvement on any art, machine, manufacture or composition of matter …
Patent Act of 1793. See, Kara W. Swanson, Making Patents: Patent Administration, 1790-1860, 71 Case W. Res. L. Rev. 777, 818 n84 (2020) (noting the change). Thus far, I have not been able to identify any explanation or justification for this particular change in the gender language. Perhaps the answer here was simply reestablishment of a patriarchy after some higher-minded ideals during the revolutionary era. Chief Justice Burger explained in Diamond v. Chakrabarty that Thomas Jefferson authored the 1793 Act with the intent that “ingenuity should receive a liberal encouragement.” 447 U.S. 303, 308 (1980) (quoting 5 Writings of Thomas Jefferson 75–76 (Washington ed. 1871)), but the Chief Justice did not content with the narrowing of pronouns (or the newly introduced citizenry limit). [*** Note: Later historians have concluded that Jefferson was not the author. See, Edward C. Walterscheid, To Promote the Progress of Useful Arts: American Patent Law and Administration – 1787-1836, 79 J. Pat. & Trademark Off. Soc’y 61 (1997) ***]. In any event, this implicit exclusion of women was common for the era (as was explicit exclusion). Still, unlike in many other areas of American life at the time, the revised statute was not interpreted to expressly exclude women from patenting. That said, patenting by women was at an extremely low level. Women inventors are credited with only 72 patents during the first 70 years of the U.S. patent system. Although the records are unclear, I have not seen any indication that any of the patents issued 1790-1793 were awarded to women inventors.
The patent laws were rearranged and recodified in the 1952 Patent Act. At that point Congress used a more generalized pronoun “whoever” for the new Section 101: “Whoever invents or discovers…” But, a number of purely male references remained in the statute. Section 115 required the inventor to make an oath that “he believes himself to be the original and first inventor;” Section 102(f) prohibited a person from obtaining a patent if “he did not himself invent the subject matter sought to be patented.” These two provisions were amended and removed respectively as part of the America Invents Act of 2011. Section 115 now identifies inventors as either male or female–requiring an inventor’s oath stating that “individual believes himself or herself to be the original inventor.” Still, other provisions in the law were not changed during this makeover and remain male gendered. See 35 USC 251 (“patentee claiming more or less than he had a right”); 289; 290; 33 (referring to the patent practitioner); and 116. In addition, all references to the USPTO Director continue to refer to the director as male.
For its part, the USPTO has not historically asked for the gender of its applicant. Still, there is plenty of evidence for historic and ongoing systemic gender bias. See, for example, Kyle Jensen, Balázs Kovács & Olav Sorenson, Gender Differences in Obtaining and Maintaining Patent Rights, 36 NATURE BIOTECH. 307, 308 (2018); B. Zorina Khan, Married Women’s Property Laws and Female Commercial Activity: Evidence from United States Patent Records, 1790-1895, 56 J. ECON. HIST. 356 (1996); Deborah J. Merritt, Hypatia in the Patent Office: Women Inventors and the Law, 1865-1900, 35 AM. J. LEGAL HIST. 235, 290 (1991); Carroll Pursell, The Cover Design: Women Inventors in America, 22 TECH. & CULTURE 545 (1981). Dan L. Burk, Do Patents Have Gender?, 19 Am. U. J. Gender Soc. Policy & L. 881 (2011).
For many years, the use of a single male pronoun in legal documents has been frequently interpreted as including all genders of humans as well as other legal persons, such as corporations. In recent arguments regarding AI-inventorship, the USPTO argued that the Congressional rewrite of Section 115 to focus binary gender identities indicates an intent to limit inventorship rights to only human inventors.
Pre-AIA: “he believes himself to be the original and first inventor.”
Post-AIA: “such individual believes himself or herself to be the original inventor.”
Of course, our new world also accepts non-binary gender, both under federal law and the law of some states. Interpreting “himself or herself” as particularly limiting is clearly wrong if it excludes non-binary humans from the patenting process. This brings me back to the Patent Act of 1790. It appears clear from the grammatical context that Congressional use of “they” in the 1790 Act was referring to instances what we now call joint inventorship. But, perhaps that early Congress had already stumbled upon a right answer.
On Monday, June 6, the Federal Circuit will hear oral arguments in the pending AI-inventorship case of Thaler v. Vidal, Appeal No 21-2347. The court does not release the identity of the individual judges until just before oral arguments, so all we (and the parties) know is that it is Panel A in Courtroom 201.
This case raises the novel legal issue of whether a patent can be obtained for an invention created by an artificial intelligence (AI) in the absence of a traditional human inventor (“AI-Generated Invention”). The United States Patent and Trademark Office (“USPTO”) and the District Court for the Eastern District of Virginia have barred such inventions from being patented. This ignores fundamental statutory and constitutional principles and also stymies innovation. While other countries are promoting the progress of science, the USPTO is belatedly adopting luddism.
Appellant’s brief. In their responsive brief, the US narrowed the issue somewhat:
Whether the District Court correctly concluded that an artificial intelligence device comprised solely of source code cannot qualify as an “inventor” under the Patent Act, where the plain statutory language specifically defines “inventor” to be an “individual” and refers to an “inventor” using personal pronouns.
Samsung v. Dynamics, 21-2352. PTAB sided with the patentee Dynamics. On appeal, Samsung argues obviousness — that the Board failed to consider some aspects of the prior art and required motivation-to-combine be found in the primary reference. Dynamics patents cover electronic emulation magnetic stripes (on, for instance credit cards). The infringement argument is that Samsung’s digital wallet infringes. John O’Quinn (Kirkland Ellis) will argue for Samsung and Robert Morris (Eckert Seamans) for Dynamics.
In re A. Zeta S.R.L., 22-1178. Zeta is an Italian company seeking to register the mark PARMA COFFEE to be used for coffee, chocolate, tea, and other food/beverages. Parma is a mid-sized city in Italy (200k people) and the goods in question apparently originate from Parma. The PTAB refused to register the mark — finding the COFFEE portion of the mark generic, and PARMA to be “Primarily Geographically Descriptive” under Section 2(e)(2) of the Lanham Act. One issue here is about “origination” — the coffee is not grown in Parma but the PTO still argues that there is sufficient connection with the city (and also that Zeta waived that argument before the TTAB). The parties waived oral arguments in the case and so it will be submitted on the briefs .
Oral arguments in the AI-inventorship case of Thaler v. Vidal are set for June 6, 2022. Prof. Ryan Abbott is set to argue on behalf of the patent owner (and AI creator) Stephen Thaler. Assistant US Attorney Dennis Barghaan will argue on the USPTO’s behalf.
Thaler developed an AI that he calls DABUS. DABUS apparently created two inventions–a “neural flame” and a “fractal container.” But, Thaler refused to name himself as inventor. Rather, he says that it was DABUS who did the inventing. But, the PTO refused to issue the patent without a human listed inventor. After being rejected by the PTO, Thaler filed a civil action in the E.D. Va. That court dismissed the case–holding that a non-human device cannot quality as an “inventor.” Abbott and Barghaan litigated the case below as well.
The question on appeal:
As stated by Thaler: “whether an AI-Generated Invention is patentable.”
As stated by the Gov’t: Whether “an artificial intelligence device comprised solely of source code can[] qualify as an ‘inventor’ under the Patent Act.”
Lots of folks might resist Thaler’s suggestion that the AI is the one who invented, but at this dismissal stage of the litigation that fact is procedurally assumed to be true. Both sides in this case have good arguments, but we should probably be troubled if the result is that “two otherwise patentable inventions cannot receive patent protection” despite the statutory statement that “[p]atentability shall not be negated by the manner in which the invention was made.” 35 U.S.C. 103.
Prof. Ryan Abbott has gathered an amazing group of scholars for his new book on AI and IP that is forthcoming later this year. Research Handbook on Intellectual Property and Artificial Intelligence (Edward Elgar Press, Forthcoming 2022) (R. Abbott, ed.).
In general, the various chapters focus on various aspects of machine-based AI. My contribution takes a different tack and instead consider idea that modern corporations and other non-human entities are also a form of artificial intelligence. But, unlike their computer-bound AI cousins, corporations have already been granted the legal fiction of personhood status and many accompanying civil rights.[1]
I write:
An item still lacking from the corporate arsenal is inventorship rights. Yes, a corporation may own or license an invention and its resulting patents. And in fact, most patents are owned by non-human persons. But, the law persists in most nations as it has for more than 200 years that patentable inventions must begin with a human person, the inventor. In that sense, there is no “corporate invention” because corporate ownership of patent rights are derived rather than original—they stem from a transfer of property rights from human inventors who begins the chain of title.
This chapter considers the competing legal fictions of corporate personhood and corporate invention and how those factions operate in the transformed legal regime that places less emphasis on the role of human inventors and their inventive acts.
I would love to get your suggestions and feedback. [Read mine here]. You’ll be able to read the whole book soon, but meanwhile here are a few chapters that are available in draft form:
[1] Dennis D. Crouch, Legal Fictions and the Corporation as an Inventive Artificial Intelligence, Forthcoming Chapter in Research Handbook on Intellectual Property and Artificial Intelligence (R. Abbott, ed), https://ssrn.com/abstract=4081569.
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.
Event: I am looking forward to presenting a new project at the annual BYU Copyright Symposium on Thursday, August 19, 2021. The event is online and free, but you must register first. My co-author and co-presenter is Dr. Homayoon Rafatijo who has been a Chemistry professor and also finishing his JD this semester. Our paper criticizes the Supreme Court’s sovereign immunity decision in Allen v. Cooper (2020), looking primarily at constitutional history issues. [Symposium Home] [Schedule]. I believe that folks who register have access to the paper. We’ll distribute more publicly after incorporating some feedback from the event.
Publication Opportunity: I have been newly appointed as the advisor for Mizzou Law’s business law journal: the Business, Entrepreneurship & Tax Review (BETR). I have an essay coming out in the next issue on the topic of inventorship attribution and reattribution. The staff is looking for one more outside article this Fall. They prefer shorter articles (~20 pages) written and footnoted in law review style. Submit here: mulawbetr@missouri.edu.
Publication Opportunity: Homayoon is lead articles editor for the Journal of Dispute Resolution (JDR) and they are also looking for an additional article for the fall. With a grant from the NAA, the journal is also awarding prize money ($3k; $1k) for the best professional and student articles relating to labor and employment dispute resolution. Lots of work is going on in this area involving non-compete, confidentiality, and IP transfer agreements within and between firms. Submit here: jdr@missouri.edu.
Guest Post by Meshandren Naidoo and Dr. Christian E. Mammen
A world first – South Africa recently made headlines by granting a patent for ‘a food container based on fractal geometry’ to a non-human inventor, namely an artificial intelligence (AI) machine called DABUS.
Over the past three years, the AI algorithm DABUS (short for Device for the Autonomous Bootstrapping of Unified Sentience) and its team of supporting humans, including Dr. Stephen Thaler and Prof. Ryan Abbott, have made headlines around the world as they sought patent protection for a fractal-inspired beverage container (shown below) that they contend was invented by DABUS.
Notably, their application has been denied by the United States Patent and Trademark Office (USPTO), the United Kingdom Intellectual Property Office (UKIPO), and the European Patent Office (EPO). The grounds for rejection have included a mix of procedural formalities, formal legal requirements, and theoretical objections. The procedural formalities and formal legal requirements, which have been equally important to the theoretical questions in these decisions, are sometimes overlooked in the popular media. They include such issues as whether (and how) Dr. Thaler obtained authorization from DABUS to file the patent application, and whether the patent statutes include a requirement that inventors be human. Each of these three jurisdictions found sufficient reasons in these formalities to reject DABUS’ patent applications. In addition, the EPO focused on the broader question of legal personhood: namely, that a number of other rights and obligations are attendant upon being an inventor, and unlike humans, an AI lacks the legal personhood to discharge those obligations and exercise those rights. The UK courts reasoned similarly, noting that an AI lacks the capacity to hold property, and therefore could not have authorized Dr. Thaler to act on its behalf. The USPTO emphasized that under US law invention requires “conception” followed by reduction to practice, and reasoned that “conception” requires a theory of mind that is simply not established to be present in an AI.
Critics of those decisions have emphasized the role of patenting as a part of national industrial policy, and in particular the role of patent grants in encouraging innovation. With increasingly capable AI algorithms, the argument provides, the ability to innovate is shifting from an exclusively human domain to one that includes the algorithms, and modern industrial policy needs to encourage and reward that shift.
These same factors appear to have come into play in the South African decision, though to a clearly different outcome.
The pitfalls of formal examination in South Africa
In July 2021, South Africa’s patent office, the Companies and Intellectual Property Commission (CIPC), granted the South African DABUS patent application, which was published in the South African Patent Journal. Unlike the USPTO, UKIPO and EPO, the CIPC does not conduct a more thorough interrogation of patent applications, known as substantive search and examination (SSE). Instead, all that is required in a formal examination (also known as a registration-based system) is for the application forms and fees to be in order with the specification documents attached. If these affairs are in order, the patent will summarily be granted by the CIPC. This, along with the lack of information provided by the CIPC post-grant has led to criticism directed towards its non-examining nature. This limited review for compliance with the procedural formalities appears to have reached a different outcome than the USPTO, UKIPO and EPO, finding that Dr. Thaler is empowered to apply on behalf of DABUS. No further information has thus far been given by the CIPC relating to the grant. It should be noted however that the ongoing patent reform in South Africa provides for training and infrastructure upgrades to accommodate a shift towards implementing SSE.
Does substantive South African patent law preclude AI inventorship?
The South African Patent Act 57 of 1978 (Patent Act) does not define an ‘inventor’ hence it is arguable that the Patent Act could, or should, be interpreted to include AI. However, the Patent Act presents some challenges in doing so such as, inter alia, the requirement for the provision of names and addresses of inventors—the EPO cited a similar requirement in denying DABUS’ application. If the reasoning of the USPTO is followed, a further challenge to the DABUS patent in South Africa would be the ‘first and true inventor test’. Like the ‘conception’ test in American patent law – the object of the test is to determine the identity of the ‘devisor’ of the invention. With that said, it is open for the South African legal system to determine if the test, which was originally crystallised in South African law in 1902[1] (with not much development taking place between then and now) is a bar to AI inventorship. Whilst case law[2] which explains the test also refer to pronouns such as ‘he’ or ‘she’, South Africa could diverge from the USPTO and employ a more purposive approach to its interpretation (which is the Constitutionally recognised manner of interpretation) as opposed to a more textual one.[3] This statutory interpretation method would include broader considerations in the process such as (1) advantages posed by AI inventorship; (2) policy directives; (3) the fact that AI inventorship was unlikely to have been considered during the period when the test was originally developed and; (4) the object of the test is to determine the identity of the deviser of the invention in the event of disputes and the like – not to preclude other non-human entities from innovating.
Was granting the patent a mistake?
At first glance, it may appear that the DABUS patent was erroneously granted by the CIPC. Although there has been a shift towards digitization, the CIPC has struggled extensively in the past with infrastructure and administrative issues. But it may be premature to conclude that the granting was erroneous. The post-apartheid government foresaw the challenges associated with the exclusion of a large portion of citizens from economic participation, and central to the solution was science, technology, and innovation. This culminated in the White Paper on Science and Technology in 1996. Soon after, came many other strategic policies aimed at placing South Africa and its citizens in a stronger position. In 2019, the Presidential Commission on the Fourth Industrial Revolution and an updated White Paper on Science and technology was published – both of which highlighted the need for a technology-orientated approach to solving socio-economic issues.
Unfortunately, innovation (noted in the 2019 White Paper on Science, Technology, and Innovation) as measured in products produced and patent output from South African applicants in the country and in other jurisdictions via the Patent Cooperation Treaty (PCT) has remained ‘relatively flat’. Adding to this was policymakers’ concerns of ‘the brain drain’ – the emigration of skilled persons in search of better opportunities and environments.
In April 2021, a call for public comments on the proposed National Data and Cloud Policy in terms of the Electronic Communications Act 36 of 2005 highlighted three main points: (1) the South African Government aims to create an AI institute to assist with reformation; (2) the intention of this is to encourage investment in, and exploration of, AI as a means to achieve sustainable development goals and economic growth; and (3) AI is viewed as a solution to some of the capacity issues facing South Africa.
Thus, as a matter of national industrial policy, it is entirely possible that the grant of DABUS’ patent is fully consistent with the emphases on broad access, digital innovation, and support of science and technology generally.
An opportunity for South Africa?
Given that South Africa is currently undergoing major patent reform, South Africa’s policymakers may find that it would be prudent to capitalise on any presented advantages. Support for, and recognition of, AI inventorship could make South Africa an attractive option for investment and innovation and may also cause these systems to be viewed as a sustainable form of innovation. The path forward for South Africa is uncertain, but there are opportunities in recognising AI as an inventor that could aid in achieving the national policy goals. In doing so, South Africa may champion the Fourth Industrial Revolution and signal leadership to other countries. Indeed, in just the few days since the South African DABUS patent was granted, the Australian Federal Court appears to have followed suit, overturning a rejection of DABUS’ application by that country’s patent office and finding that recognizing AI inventorship would be “consistent with promoting innovation.”[4]
[1]Hay v African Gold Recovery Co 1902 TS 232 p 233.
[2]University of Southampton’s Applications [2006] RPC 567 (CA) paras 22–25.
[3]Bertie Van Zyl (Pty) Ltd v Minister for Safety and Security 2010 (2) SA 181 (CC) para 21.
Mr Meshandren Naidoo is a Ph.D Fellow at the University of KwaZulu-Natal (South Africa) and member of the African Health and Research Flagship. His areas of interest are AI technology, intellectual property, business strategy, and bioethics. His Ph.D involves looking at the challenges posed by AI technology to South African patent law and what the potential solutions may be.
Dr. Christian E. Mammen is an IP litigation partner with Womble Bond Dickinson in Palo Alto, CA. He has practiced in San Francisco and Silicon Valley for over 20 years, and has held visiting faculty positions at a number of universities, including Oxford University, UC Berkeley Law School, and UC Hastings College of the Law. He has written and spoken extensively on AI and patent law, including “AI and IP: Are Creativity and Inventorship Inherently Human Activities,” 14 FIU L. Rev. 275 (2020).
The authors confirmed they did not receive compensation for this article and that they do not represent any clients that might be impacted by the article or the underlying decisions. The views expressed by them in this article are solely their own.
Dr. Islam is a professor at Michigan (UM). Back in 2012 though he took an unpaid leave-of-absence to start a LASER company. During that time he filed a number of patent applications that came from his time on-leave and that he assigned to Omni. However, UM argued that it owned the patents based upon his employment agreement; that it had expended some ongoing funds; and that Islam had bounced ideas off of some of the faculty members. This argument between Islam and UM was internal. UM did not file any paperwork with the PTO attempting to claim ownership and UM is not a party to the present litigation.
Omni later sued Apple for infringement, but the iPhone giant argued that Omni lacked standing since UM was the real patent owner. The district court sided with Omni — finding that Omni had received rights from the inventor, and that Islam had not assigned his rights to UM. On appeal, the Federal Circuit has affirmed.
The basic question is whether the Islam’s employment agreement with UM caused his inventorship rights to be automatically transferred in this situation.
Lets look at the contract. Here are the relevant clauses:
1) Patents … acquired as a result of or in connection with administration, research, or other educational activities conducted by members of the University staff and supported directly or indirectly (e.g., through the use of University resources or facilities) by funds administered by the University regardless of the source of such funds, and all royalties or other revenues derived therefrom shall be the property of the University.
* * *
4) Patents, copyrights, and property rights in computer software resulting from activities which have received no support, direct or indirect, from the University shall be the property of the inventor, author, or creator thereof, free of any limitation which might otherwise arise by virtue of University
employment.
5) In cases which involve both University-supported activity and independent activity by a University staff member, patents, copyrights, or other property right in resulting work products shall be owned as agreed upon in writing and in advance of an exploitation thereof by the affected staff member and the Vice-Provost for Research in consultation with the Committee on Patents and Copyrights and with the approval of the University’s Office of the General Counsel. It is understood that such agreements shall continue to recognize the traditional faculty and staff prerogatives and property rights concerning intellectual work products.
Both the district court and appellate court agreed that the agreement was not a present assignment of future inventions. “It does not purport to effectuate the present transfer of a present or future right.” Rather, at most, the language “reflects a future agreement to assign.”
Judge Newman wrote in dissent and argued that “these patents are the property of the University.”
Although both the majority and dissent conclude that the issue is a matter of contract law, neither cite to the governing law of contracts for this case–the law of Michigan.
Most patents involve two or more joint inventors who all claim to have contributed significantly to the invention. Conception of the invention is typically seen as the critical legal determinant of invention and some courts have written that each joint inventor must have contributed substantially to the conception of the invention.* Conception is typically referred to as a mental act. The MPEP, for example, includes a statement in all-caps that “CONCEPTION MUST BE DONE IN THE MIND OF THE INVENTOR.” MPEP 2138.04(I). The basic rule is that the inventor must have a “definite and permanent idea of the complete and operable invention.”
The mind-of-the-inventor doctrines have several problems, today I’m thinking about one relating to joint inventorship. As far as I know, the definitional cases regarding conception refer to “the inventor” as if inventorship is a solo process. But 75% of new patents list two or more inventors who are unlikely to have experienced joint or simultaneous conception. It turns out though that simultaneous conception is not required. Rather, this is how it works.
Multiple human people provide significant contributions toward a complete invention;
At some point, one of the individuals puts on the pieces together in a manner sufficient to be called conception.
Although only one person conceived, all of the contributors receive credit for the conception as joint inventors, even if they never understood the full invention.
This setup played out in the Federal Circuit’s 2020 Dana-Farber decision, and the court confirmed that two Harvard researchers who contributed early on in the invention process deserved to be listed as co-inventors with Kyoto University’s Dr. Honjo even though it was Honjo who actually conceived of the invention. Dana-Farber Cancer Inst., Inc. v. Ono Pharm. Co., Ltd., 964 F.3d 1365 (Fed. Cir. 2020), cert. denied sub nom. Ono Pharm. Co., Ltd. v. Dana-Farber Cancer Inst., 20-1258, 2021 WL 2044661 (U.S. May 24, 2021)
In practice, the invention is defined and shaped by the patent prosecution process, and so my easy linear process above is often only something that can be seen retrospectively once we understand the actual scope of the claimed invention.
= = =
* Above, I referred to conception as the key invention marker. Of course, the law of invention states that the invention is not complete until the invention is reduced-to-practice (either actually or constructively). Reduction-to-practice takes the idea and verifies that it actually works in practice. I think that RTP gets short shrift in the patent system, but the law is clear that a joint inventor’s contribution may be at that post-conception stage. As Judge Lourie explained in Pannu v. Iolab Corp.:
All that is required of a joint inventor is that he or she (1) contribute in some significant manner to the conception or reduction to practice of the invention, (2) make a contribution to the claimed invention that is not insignificant in quality, when that contribution is measured against the dimension of the full invention, and (3) do more than merely explain to the real inventors well-known concepts and/or the current state of the art.
Pannu v. Iolab Corp., 155 F.3d 1344 (Fed. Cir. 1998).
= = =
Painting above is a portion of The Immaculate Conception by Giovanni Battista Tiepolo (1696–1770).
I have been following the patent ownership lawsuit of Bio-Rad Laboratories, Inc. v. International Trade Commission and 10X Genomics. The case is now pending on a petition for en banc rehearing before the Federal Circuit.
Several former Bio-Rad employees left to form 10X Genomics. While at Bio-Rad, the individuals began development of a number of ideas but did not complete conception or reduction-to-practice. Some months later, after leaving and forming 10X, they completed the inventions and filed patent applications. Bio-Rad now argues that it has partial ownership rights to the inventions based upon the inventor’s contributions while employees.
In the appeal, the Federal Circuit sided with 10X, holding that the terms of the employment agreement were limited to Intellectual Property, and pre-conception ideas were not enough.
Now, Bio-Rad has petitioned for en banc rehearing arguing that the decision is contrary to a host of Federal Circuit decisions:
First, the panel’s decision conflicts with this Court’s precedent that employment contracts such as Bio-Rad’s are to be given their full import and not limited to a final conceived patentable invention. See, e.g., AT&T v. Integrated Network Corp., 972 F.2d 1321 (Fed. Cir. 1992).
Second, the panel’s decision also conflicts with precedent regarding joint inventorship that can occur serially over time and that contribution of a single idea to a final invention can qualify as joint inventorship, which is a protectable right subject to contract. See, e.g,. Vanderbilt Univ. v. ICOS Corp., 601 F.3d 1297 (Fed. Cir. 2010). Precedent does not impose a temporal restriction on when a person can become a co-inventor. The analysis requires comparing the significance of the work alleged to be an inventive contribution to the claims as a whole. Fina Oil & Chem Co. v. Ewen, 123 F.3d 1446 (Fed. Cir. 1997).
Bio-Rad is correct that the Federal Circuit appears to have been too tight in its statements of the law, but it may well be that the contributions made while employees at Bio-Rad were still insufficient.
