Inventors must be human, federal circuit rules take a hit at AI (1)

Inventors must be human, federal circuit rules take a hit at AI (1)

Computer scientist Stephen Thaler has received another blow in his battle for artificial intelligence machines to be recognized as inventors on patents, after the nation’s top patent court ruled that inventors must be human.

The term “individual” in patent law only refers to humans, meaning an AI does not count as an inventor on a patentable invention, the U.S. Court of Appeals ruled Friday for the federal circuit.

The decision matches courts in the European Union, the United Kingdom and Australia which refused to accept Thaler’s argument. Its only currently existing victory comes from a South African court which declared that an AI can be a patent inventor.

Unless the Supreme Court of the United States intervenes, the Federal Circuit is generally the final authority in U.S. patent matters, hearing all such appeals from the federal district courts and the U.S. Patent Office and brands.

Thaler is already considering appealing to the high court, his lawyer, Ryan Abbott of Brown, Neri, Smith & Khan LLP, said.

The Federal Circuit has taken a “narrow, textualist approach” to patent law, Abbott said.

“It ignores the purpose of patent law and the result that AI-generated inventions are no longer patentable in the United States,” he said. “It’s a result with real negative social consequences.”

Test cases

The case has served as a test in courts around the world to determine whether an AI system can be named as an inventor on a patent. Thaler is also suing the US Copyright Office for denying its copyright registration for not having a human author.

A three-judge federal circuit panel didn’t have to consider whether AI should have rights as an inventor, judge Leonard P. Stark written in the previous opinion.

“However, we don’t need to ponder these metaphysical questions,” Stark wrote. “Instead, our task begins – and ends – with consideration of the applicable definition in the relevant law.”

Thaler says his “creativity machine,” called DABUS, is the sole inventor on patent applications for a food container and a beacon light. The patent and trademark office rejected the applications on the grounds that there must be a human inventor for an invention to be patentable.

Thaler argued to the Federal Circuit that the term “individual” in the Patent Act should be interpreted broadly to achieve the statute’s goal of promoting innovation. During oral argument, the judges heavily questioned Thaler’s side about the plain language meaning of the word “individual” and how there really could be no human involvement in an invention.

“Individual” means human

The Patent Act defines an inventor as “the individual, or, in the case of a joint invention, the body of individuals who invented or discovered the subject matter of the invention”. Although the provision does not define the term “individual”, the Supreme Court has already ruled in a non-patent case that the word usually means a human being, according to the opinion.

Nothing in the statute shows or implies that Congress intended “individual” to mean anything other than a natural person for the sake of inventorship, Stark wrote. Patent law also uses the pronouns “himself” and “herself,” meaning Congress did not intend to license non-human inventors, the Federal Circuit found.

Other Federal Circuit case law supports the decision, Stark wrote, adding that the appeals court has previously ruled that corporations and sovereigns cannot be inventors.

Stark noted that the court does not decide whether inventions made by humans who have had the assistance of AI are eligible for patent protection. The panel rejected Thaler’s arguments that AI inventors should be allowed to encourage innovation, calling the statement “speculative.”

“There is no ambiguity here: the Patent Act requires inventors to be natural persons,” Stark wrote, “that is, human beings.”

Chief Judge Kimberly A. Moore also sat on the panel, along with Judge Richard G. Taranto.

Brown, Neri, Smith & Khan LLP represents Thaler. The Ministry of Justice represents the government.

The case is Thaler vs. Vidal, fed. Cir., n° 21-2347, opinion 05/08/22.

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