May 4, 2020

Does An Invention Discovered With Artificial Intelligence Obtain Patent Protection?

Holland & Knight Section 101 Blog
Daniel J. Barsky
Section 101 Blog

While this blog regularly discusses Section 101 issues relating to Alice and its progeny, a recent decision from the United States Patent and Trademark Office (USPTO) addresses the first word of the section – "Whoever." The question presented was: can an artificial intelligence (AI) entity be an 'inventor' in the United States? The USPTO's answer was a resounding "no." However, the decision leaves open the possibility that AI-derived inventions may be patentable, at least as far as Section 101 is concerned.

Statutory Background

Section 101 states "[w]hoever invents or discovers…may obtain a patent therefore…" According to 35 U.S.C. § 100, an inventor is defined as an individual or individuals. As technology has advanced and the possibility that AI would invent something became a probability, the question has arisen whether AI can be an inventor under United States law.

AI Listed as Inventor on Application

On July 29, 2019, Stephen Thaler, as assignee, filed a utility patent application listing the inventor's given name as "DABUS" and family name as "Invention generated by artificial intelligence." DABUS – the erstwhile "inventor" – is a "creativity machine," a series of neural networks created by Thaler. The USPTO issued a Notice to File Missing Parts because the application did "not identify each inventor by his or her legal name."

Thaler sought supervisory review, arguing the application was complete because inventorship should not be limited to natural persons, and thus, listing DABUS as the inventor was appropriate.

USPTO Determines Machines Cannot be Inventors

The USPTO disagreed. Reviewing multiple sections of Title 35, including Sections 100 and 115, as well as Merriam-Webster's Collegiate Dictionary, the USPTO determined that "interpreting 'inventor' broadly to encompass machines would contradict the plain reading of the patent statutes that refer to persons and individuals." Examining decisions from the U.S. Court of Appeals for the Federal Circuit reinforced the USPTO's statutory interpretation, noting that the Federal Circuit has repeatedly stated that an inventor needs to be a human.

Examining the Code of Federal Regulations (CFR) and the Manual of Patent Examining Procedures, the USPTO further noted numerous references to terms such as "mental" and "mind," which "indicates that conception must be performed by a natural person."

The Story Does Not End Here

Does this mean that an invention discovered with AI cannot obtain patent protection under United States law? Not necessarily. The decision notes that "[t]he USPTO has not made any determination concerning who or what actually created the invention." Moreover, the decision specifically points out the complete lack of human involvement in DABUS' discovery, noting that DABUS was not created to solve "any particular problem," was not trained "on any special data relevant to the instant invention" and that DABUS, not Thaler, "recognized the novelty and salience of the…invention."

Thaler, for his part, argued that the European Patent Office (EPO) and United Kingdom Intellectual Property Office (UKIPO) adopted the position that DABUS created the invention at issue. The USPTO rejected this argument, noting that the EPO and UKIPO were both interpreting their own statutes, indicating that there is likely to be a divergence between the USPTO and its European counterparts on the issue of AI inventorship.

While an AI cannot be a named inventor on a United States patent application, it is clear this story is far from over.

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