On June 6, the U.S. Court of Appeals for the Federal Circuit held oral argument on the issue of whether an invention generated by artificial intelligence (AI) is patentable.

The Patent Applications

As described in a companion article, which can be found here, Plaintiff Stephen Thaler, Ph.D., is the owner of a Device for the Autonomous Bootstrapping of Unified Sentience (DABUS), which he claims is an AI machine. Thaler listed DABUS as the inventor on two patent applications, one for a light beacon and one for a beverage container, that he filed with the U.S. Patent and Trademark Office (USPTO). After the USPTO determined that an inventor must be a natural person, thereby excluding DABUS, Thaler filed a civil action seeking review of the USPTO’s decision.

Procedural History

In ruling on the parties’ cross-motions for summary judgment, the U.S. District Court for the Eastern District of Virginia affirmed the USPTO’s determination that an inventor must be a natural person. The court based its decision on the plain language of the statute and prior Federal Circuit decisions that considered inventorship in different contexts. The court declined to consider any policy arguments, reasoning that such issues should be left to Congress. On Sept. 24, 2021, Thaler filed an appeal with the Federal Circuit challenging the district court’s grant of summary judgment.

The Appeal

In his opening brief, Thaler argued that the district court was wrong in concluding that an AI-generated invention is unpatentable. Specifically, he argued that the plain language of the statute does not prohibit AI inventors, pointing to the word “whoever” in the infringement portion of the Patent Act, which has been interpreted to include more than just natural persons. Moreover, Thaler argued that allowing AI-generated inventorship is consistent with the constitutional mandate and congressional intent to promote the advancement of the arts and sciences rather than reward the individual inventor.

In its responsive brief, the USPTO disagreed with Thaler’s arguments. It argued that the statute is clear – the term “inventor,” as defined to be an individual, is limited to natural persons. Any policy arguments counseling otherwise are simply irrelevant.

On June 6, the Federal Circuit held oral argument with a panel consisting of Chief Circuit Judge Kimberly A. Moore, Circuit Judge Richard G. Taranto and Circuit Judge Leonard P. Stark. Arguing for Thaler, Ryan Abbott invited the court to consider “the purpose and context of the Act,” but Moore and Stark asked him to focus his arguments on the plain language. By the same token, Taranto asked Abbott to consider what AI really is, noting that it is defined as a “capability and not a physical thing.” Taranto also asked about the purpose behind the Act, and Abbott responded by arguing that if “Pfizer can make an antibody to treat COVID from a supercomputer,” that is inventive activity that Congress will want disclosed.

Dennis C. Barghaan argued for the USPTO, and the panel focused the majority of its questions for him on whether the creator of the AI rather than the AI itself should be listed as the inventor. Specifically, Moore asked whether the programmer, a natural person, should be the inventor for purposes of the Act. Barghaan argued that this type of resolution would only create more questions and should be left to Congress to resolve.

After a short rebuttal from Abbott, the argument ended with a question posed by Taranto: “Do the mythic monkeys who type out Shakespeare get to be copyright holders?” Rather than respond, Abbott lightheartedly stated that he was out of rebuttal time.

Conclusion

While it appears likely that the Federal Circuit will affirm the district court’s ruling that AI machines cannot be inventors, oral argument posed some interesting questions about who should be listed as inventors for AI-generated patents.

One option, which seems to have garnered at least some support from the Federal Circuit, is to name the person who programmed the AI as the inventor, especially if there is only one person responsible for such programming. Of course, another option is to forgo patent protection altogether and opt for trade secret protection instead. To the extent that this chills innovation, it will be up to Congress to act, especially if the policy concerns raised by Thaler prove to be true.