This week we are previewing oral arguments scheduled for next week at the Federal Circuit in three cases that attracted amicus briefs. Today we highlight Thaler v. Vidal. Thaler is the developer, user, and owner of DABUS, an artificial intelligence system that created the two inventions at issue without the assistance of a human inventor. In this case, Thaler seeks review of a district court’s grant of summary judgment to the U.S. Patent and Trademark Office, deciding that “an artificial intelligence machine cannot be an ‘inventor’ under the Patent Act.” This is our argument preview.
In its opening brief, Thaler argues that the Patent Act “does not require that an ‘inventor’ be a human being.” He begins by analyzing the standard of review. He argues that the court should review the grant of summary judgment de novo and that the court should apply neither Chevron deference nor Skidmore deference to the district court’s decision. He next argues that the plain language of the Patent Act supports AI-generated inventions. He claims that the terms “individual” and “persons” included in the Act are not limited to human beings and “in their plain meaning can include artificial intelligence.” He argues that, plain language aside, the USPTO “has provided no evidence, case law, statutory law, or any other authority that would indicate that Congress intended to prohibit patents on AI-Generated Inventions.” Additionally, Thaler claims there is no “conception” requirement that would prevent a patent on an AI-generated invention because the date of conception was intended to “establish priority of inventorship,” not to deny patent protection.” Thaler argues that “it does not matter how an invention was made, and courts have gone so far as to hold that ‘[t]he process by which an invention is created is irrelevant to the analysis of its patentability.’” Moreover, he argues, granting the patents for the AI-generated inventions to himself would be consistent with the Congress’s intent. Finally, Thaler asserts, “the constitutional avoidance canon of construction supports granting patents” for AI-generated inventions, and “excluding an entire cutting-edge class of inventions from patentability would undermine the patent system,” which seeks to promote “the progress of science and the useful arts.”
In its response brief, the USPTO focuses on the use of the terms “individual” and “himself or herself” within statutory definition of “inventor.” The government also highlights the requirement of the inventor’s “given name” on a patent application. The USPTO next argues that AI cannot “execute the necessary oath or declaration that the Patent Act requires of the inventor.” The government also dismisses Thaler’s policy considerations as irrelevant “because they could ‘not overcome the plain language of the patent laws as passed by the Congress and as interpreted by the courts.’”
In his reply brief, Thaler reasserts his argument that the term “individual” should be interpreted broadly. He also argues that the USPTO improperly separates context from its interpretation of the plain meaning of the Patent Act. He next contends that “what the USPTO attempts to frame as mere ‘policy argument’ is instead an understanding of context and Congressional intent.” Thaler goes on to emphasize the assumed Congressional intent of “supporting innovation” and claims that evolving technology requires an interpretation consistent with the “statutory purpose” of the Act.
An individual named Mitchell Apper filed a pro se amicus brief in support of affirming the district court. In the brief, Apper explains that he wants intellectual property law to be evaluated “with integrity, rooted in accurate science and engineering.” Apper, moreover, seeks to distinguish AI from artificial general intelligence (AGI). He calls DABUS “narrow” AI, explaining that it is “erroneous to characterize DABUS as intelligent because DABUS lacks any of the intelligence prerequisites for conception.” Additionally, Apper argues, the “true inventor of an AI’s products and output is not the AI, but the inventor or inventors of the AI.” He also makes arguments addressing the “conception” requirement discussed in Thaler’s opening brief. Apper asserts that “conception requires having a mind” and argues “narrow AI” such as DABUS could not conceive an idea. He concludes his brief by claiming that “programmers and architects of the programs are the true inventors of the products” created by AI.
This case will be argued on Monday, June 6. We will report on developments.