Stephen Thaler v. Vidal/USPTO
Docket No. 2021-2347 (https://cafc.uscourts.gov/opinions-orders/21-2347.OPINION.8-5-2022_1988142.pdf)
MOORE, TARANTO, STARK
August 5, 2022
Brief Summary: FC panel affirms ED VA and USPTO findings that only human beings and not computers (i.e., artificial intelligence) can be inventors under the Patent Act.
Summary: Stephen Thaler appealed USPTO and DC denials of his patent applications “which failed to list any human as an inventor” because “the Patent Act defines ‘inventor’ as limited to natural persons; that is, human beings.” The ED VA agreed with the USPTO, and Mr. Thaler appealed to the FC. In the patent applications to a “Neural Flame” and a “Fractal Container”, Thaler wrote that “the invention [was] generated by artificial intelligence”, “DABUS” (“Device for Autonomous Bootstrapping of Unified Science”), “a collection of source code or programming and a software program.” Thaler also submitted a “supplemental ‘Statement of Inventorship’ explaining that DABUS was ‘a particular type of connectionist artificial intelligence’ called a “Creativity Machine’” and “a document purporting to assign himself all of DABUS’ rights as an inventor.” The USPTO sent a Notice to File Missing Parts requesting Thaler to “identify valid inventors” which Thaler unsuccessfully asked the PTO director to “vacate…based on his Statement of Inventor”. Thaler requested judicial review under the APA and the DC granted to USPTO’s motion for summary judgment, denying Thaler’s request for reinstatement of his applications as lacking a human inventor. The FC panel reviewed the DC’s grant of SJ de novo (under the Fourth Circuit regional law; Supernus, FC 2019; 5 USC 706; Facebook, FC 2020). The FC panel began its analysis with the statute (the Patent Act; BedRock, US 2004) and found “no ambiguity: the Patent Act requires that inventors must be natural persons; that is, human beings.” Noting that “[t]he Patent Act does not define ‘individual’”, it also explained that “the Supreme Court has explained, when used ‘[a]s a noun, ‘individual’ ordinarily means a human being, a person’…unless there is ‘some indication Congress intended’ a different reading” (Mohamad, US 2012) which “[d]ictionaries confirm”. The FC panel also rejected Thaler’s section 101-based arguments regarding the term “whoever” as well as his section 103-based arguments as “not about inventorship”. The FC panel therefore agreed with the USPTO and DC, “holding…that an ‘inventor’ must be a human being is supported by our own precedent” (Univ. Utah, FC 2013 (“[I]nventors must be natural persons and cannot be corporations or sovereigns.”); Beech Aircraft, FC 1993 ((“[O]nly natural persons can be ‘inventors.’”)). The FC panel also rejected Thaler’s arguments “that inventions generated by AI should be patentable in order to encourage innovation and public disclosure” (Sw. Airlines, US 2022) and his invocation of “the canon of constitutional avoidance” as, e.g., “Congress has chosen to act pursuant to that power by passing the Patent Act” and he did not “(and cannot) argue that limiting inventorship to human beings is unconstitutional” (Veterans4You, FC 2021; Warger, US 2014)). The fact “that South Africa has granted patents with DABUS as an inventor” was also not persuasive as that “foreign patent office was not interpreting our Patent Act”.