The Legal Brief
Federal Circuit to Consider the Patentability of AI-Created Inventions
June 23, 2022
By: Joshua A. Claybourn and Chandler Lacy
Artificial intelligence (AI) utilizes technology to complete activities that normally require human intelligence.[1] AI technology increasingly plays a substantial role in our everyday lives, whether it be playing an online game of checkers against the computer, using an online language translator, or driving an autonomous vehicle.[2] With AI technology’s increasing prevalence, legal questions arise relating to how AI fits within intellectual property law. The U.S. Federal Circuit addressed one such issue in the patent context in Thaler v. Vidal.
Computer scientist Stephen Thaler developed an AI machine called DABUS, which created a new beverage container based on fractal geometry and a light beacon that flashes in a new way.[3] Thaler listed DABUS as the inventor of the two inventions on patent applications and made clear that the products were the product of AI.[4] The U.S. Patent and Trademark Office (USPTO), as well as the U.S. District Court for the Eastern District of Virginia, rejected Thaler’s attempts to patent both of DABUS’s inventions because they construed that an “inventor” who obtains a patent under the Patent Act must be a “natural person.”[5] Thaler appealed the district court’s decision and the U.S. Federal Circuit heard oral arguments on the matter on June 6, 2022.
The Patent Act defines the inventor of a patent as the “individual or, if a joint invention, the individuals collectively who invented or discovered the subject matter of the invention.”[6] In oral arguments before the Federal Circuit, Thaler’s attorney argued that this language does not specifically state that the inventor of a patent must be a “natural person.”[7] Thaler’s attorney instead argued that a patent for DABUS’s inventions should be granted because the Patent Act specifically states that “[p]atentability shall not be negated by the manner in which the invention was made.”[8] Thaler’s attorney also argued that denying patents created by AI would go against the intentions of the Patent Act which was to encourage innovation.[9]
The three-judge panel of the Federal Circuit expressed two main concerns with the argument advocated by Thaler’s attorney at oral arguments. First, one judge on the panel questioned whether AI could be considered an “individual” under the language of the Patent Act.[10] Second, another judge on the panel pointed to how the definition of AI usually refers to a specific capability and not to the specific machine or piece of technology that is utilizing the AI.[11]
The Federal Circuit’s decision in this matter may significantly impact future AI technology in the United States.[12] A ruling in Thaler’s favor would open up an entirely new class of patentable work and could potentially serve as a catalyst for researchers and businesses to use AI to invent items or processes.[13] Conversely, if AI is not an inventor under the Patent Act, who gets the credit when AI is utilized as a means to invent items or processes since such innovations and how would these inventions be protected by U.S. patent law?[14] Since the goal of the Patent Act is to encourage innovation, the courts may have to balance the complexities of AI and the nature of the “individual” against the need to use AI to solve problems and invent solutions.
[1] Harry Surden, Artificial Intelligence and Law: An Overview, 35 Ga. St. U. L. Rev. 1305, 1307 (2019).
[2] See id.
[3] Blake Brittain, Artificial Intelligence Can be a Patent ‘Inventor’, U.S. Appeals Court Told, Reuters (June 6, 2022), https://www.reuters.com/legal/litigation/artificial-intelligence-can-be-patent-inventor-us-appeals-court-told-2022-06-06/#:~:text=The%20case%20argued%20on%20Monday,inventor%20under%20U.S.%20patent%20law.
[4] Thaler v. Hirshfeld, 558 F.Supp.3d 238, 241 (E.D. Va. 2021).
[5] Id. at 242.
[6] 35 U.S.C.A. § 100(f) (West) (emphasis added).
[7] Brittain, supra note 3.
[8] 35 U.S.C.A. § 103 (West).
[9] Brittain, supra note 3.
[10] Id.
[11] Id.
[12] See Alexandra George & Toby Walsh, Artificial Intelligence is Breaking Patent Law, Nature (May 24, 2022), https://www.nature.com/articles/d41586-022-01391-x.
[13] Id.
[14] Id.