Last week, the Federal Circuit issued its opinion in Thaler v. Vidal, a patent case we have been watching because it attracted amicus briefs. On appeal, Thaler sought review of a district court’s grant of summary judgment to the U.S. Patent and Trademark Office, which decided that an artificial intelligence machine cannot be an inventor under the Patent Act. In a unanimous opinion authored by Judge Stark and joined by Chief Judge Moore and Judge Taranto, the Federal Circuit affirmed the district court. This is our opinion summary.
As mentioned, Judge Stark authored the Federal Circuit’s opinion. He described the facts of the case:
Thaler represents that he develops and runs AI systems that generate patentable inventions. One such system is his “Device for the Autonomous Bootstrapping of Unified Science,” which Thaler calls “DABUS.” Thaler has described DABUS as “a collection of source code or programming and a software program.” Supp. App. at 781.
In July 2019, Thaler sought patent protection for two of DABUS’ putative inventions by filing two patent applications with the PTO: U.S. Application Nos. 16/524,350 (teaching a “Neural Flame”) and 16/524,532 (teaching a “Fractal Container”). He listed DABUS as the sole inventor on both applications. Thaler maintains that he did not contribute to the conception of these inventions and that any person having skill in the art could have taken DABUS’ output and reduced the ideas in the applications to practice.
In lieu of an inventor’s last name, Thaler wrote on the applications that “the invention [was] generated by artificial intelligence.” App. at 28, 69. He also attached several documents relevant to inventorship. First, to satisfy 35 U.S.C. § 115’s requirement that inventors submit a sworn oath or declaration when applying for a patent, Thaler submitted a statement on DABUS’ behalf. Second, Thaler provided a supplemental “Statement on Inventorship” explaining that DABUS was “a particular type of connectionist artificial intelligence” called a “Creativity Machine.” App. at 198-203, 483-88. Third, Thaler filed a document purporting to assign himself all of DABUS’ rights as an inventor.
The PTO concluded both applications lacked a valid inventor and were, hence, incomplete. Accordingly, it sent Thaler a “Notice to File Missing Parts of Nonprovisional Application” for each application and requested that Thaler identify valid inventors. In response, Thaler petitioned the PTO director to vacate the Notices based on his Statements of Inventorship. The PTO denied Thaler’s petitions on the ground that “a machine does not qualify as an inventor.” App. at 269-71, 548-50. Thaler sought reconsideration, which the PTO denied, explaining again that inventors on a patent application must be natural persons.
Thaler then pursued judicial review of the PTO’s final decisions on his petitions, under the Administrative Procedure Act (APA). See 5 U.S.C. §§ 702-704, 706. The parties agreed to have the District Court adjudicate the challenge based on the administrative record made before the PTO and filed cross-motions for summary judgment. After briefing and oral argument, the Court granted the PTO’s motion for summary judgment and denied Thaler’s request to reinstate his applications. The District Court concluded that an “inventor” under the Patent Act must be an “individual” and the plain meaning of “individual” as used in the statute is a natural person.
Thaler appealed.
Judge Stark began the Federal Circuit’s analysis by discussing the term “individual.” The Federal Circuit referenced Supreme Court cases, dictionary definitions, and the Dictionary Act, all of which confirmed that Congress “understands ‘individual’ to indicate natural persons unless otherwise noted.” The opinion concluded that “nothing in the Patent Act indicates Congress intended to deviate from the default meaning.” The court went on to say that the rest of the Act supports the conclusion that the term “individual” only refers to human beings.
The Federal Circuit rejected Thaler’s arguments that the Patent Act supports his claim that “individual” is not exclusive to humans. First, the court addressed Thaler’s argument surrounding the use of “whoever” within a section of the Act. While in the section the term included non-humans such as corporations, the Federal Circuit highlighted that the section he referenced simply makes it clear that “non-humans may infringe patents.” But, the court explained, the section says nothing about whether “non-humans may also be inventors of patents.” Judge Stark also noted that “Congress uses ‘whoever’ as a much broader term than ‘individual.’”
The Federal Circuit next focused on Thaler’s argument that without allowing AI programs to qualify as inventors, patentability would depend on “the manner in which the invention was made,” which would conflict with another statutory provision, 35 U.S.C. § 103(a). Judge Stark dismissed this argument by pointing out that the provision “relates to how an invention is made and does not trump a provision that specifically addresses who may be an inventor.”
Judge Stark then briefly addressed Thaler’s additional arguments. He stated that “Thaler’s policy arguments are speculative and lack a basis in the text of the Patent Act and in the record.” He went on to say Thaler’s invocation of the canon of constitutional avoidance was inapplicable because Thaler “does not (and cannot) argue that limiting inventorship to human beings is unconstitutional.”
As a result of its analysis, the Federal Circuit affirmed the decision of the district court.
Notably, early in his opinion for the court, Judge Stark highlighted the narrow question the case presented: “Specifically, we are asked to decide if an artificial intelligence (AI) software system can be listed as the inventor on a patent application.” And he contrasted this narrow question with broader inquiries: “At first, it might seem that resolving this issue would involve an abstract inquiry into the nature of invention or the rights, if any, of AI systems. In fact, however, we do not need to ponder these metaphysical matters.” Indeed, the court’s opinion did not address these broader “metaphysical matters.” Time will tell if the court in future cases will be called upon to do so.