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Artificial Intelligence Developments in Patent Law

on Tuesday, 23 May 2023 in Technology & Intellectual Property Update: Arianna C. Goldstein, Editor

Artificial intelligence (“AI”) remains a developing field in intellectual property and recently, on April 24, 2023, the Supreme Court denied certiorari in the case brought by Dr. Stephen Thaler, Thaler v. Vidal. Dr. Thaler, a computer scientist who in his 2019 patent application, named his AI model Device for Autonomous Bootstrapping of Unified Sentience (“DABUS”) as the inventor. The USPTO refused the application on the basis that legislation and precedent on inventorship “require that an inventor must be a natural person.” This commenced Dr. Thaler’s unsuccessful, years-long battle to have the USPTO decision overturned.

Dr. Thaler first appealed to the Virginia Eastern District Court, but the court agreed with the USPTO’s decision. The court cited “overwhelming evidence” that the definition of “inventor” was limited by Congress to natural persons. Further, “[P]olicy arguments do not override the overwhelming evidence that Congress intended to limit the definition of ‘inventor’ to natural persons. As technology evolves, there may come a time when artificial intelligence reaches a level of sophistication such that it might satisfy accepted meanings of inventorship. But that time has not yet arrived, and, if it does, it will be up to Congress to decide how, if at all, it wants to expand the scope of patent law.”

Subsequently, Dr. Thaler appealed to the Federal Circuit, with the same lack of success. The Federal Circuit handed down judgment on August 5, 2022 and rejected Dr. Thaler’s arguments. Holding that, “When a statute unambiguously and directly answers the question before us, our analysis does not stray beyond the plain text. Here, Congress has determined that only a natural person can be an inventor, so AI cannot be.” Dr. Thaler and his legal tem were not deterred by this decision and on March 17, 2023 filed a petition asking the Supreme Court to clarify whether the US Patent Act restricts the definition of an inventor to human beings. As mentioned earlier, however, the Supreme Court refused the petition on April 24th.

With the resounding rejection of Dr. Thaler’s claims, it will seemingly be left up to Congress to decide whether the definition of inventorship will be limited to human beings or whether AI will be included. Regardless, it appears the USPTO is willing to enter the conversation and hear arguments as to whether or not the definition of inventorship should be expanded. On Feburary 14, 2023 the USPTO requested comments regarding AI and inventorship. More specifically stating that, “[T]o build on the AI/[emerging technology] Partnership efforts, the USPTO is seeking stakeholder input on the current state of AI technologies and inventorship issues that may arise in view of the advancement of such technologies, especially as AI plays a greater role in the innovation process.”

We will continue to monitor the AI conversation affecting intellectual property and provide updates on any significant developments.

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