The ongoing artificial intelligence (“AI”) inventorship case of Thaler v. Iancu, et al. (No. 1:20-cv-00903) took another turn on April 6th when U.S. District Court Judge Leonie Brinkema of the Eastern District of Virginia signaled she may rule that AI systems cannot be listed as inventors on U.S. patent applications. Plaintiff Dr. Stephen Thaler is the inventor of an AI system named “DABUS”, which went on to allegedly invent the subject-matter of two patent applications filed at the United States Patent and Trademark Office (“USPTO”). Following the USPTO’s rejection of the applications on the grounds that the applications were deficient and an AI system cannot be listed as an inventor, Thaler filed a lawsuit against the USPTO in 2020. It should be noted that both the USPTO and Thaler agree that Thaler himself apparently could not be listed as the inventor of the subject-matter of the patent applications.

At a summary judgment hearing in the case, Judge Brinkema stated that Plaintiff Thaler has “a huge uphill battle . . . because the statutory language [of the Patent Act] is so crystal clear” that an “inventor” must be living “individual”, and not a machine. Judge Brinkema further stated that it is the job of legislatures, not the courts, to address such issues as technology rapidly advances; “Courts are not legislatures . . . and I think ultimately what you’re asking this court to do is legislate.”

The potential effects a ruling in favor of Thaler would have on other areas of patent law also arose at the hearing in the context of patent assignments. Specifically, Judge Brinkema questioned how an AI system could assign rights in an invention to which it is named when the assigning party must have intent to assign the rights.

While it remains to be seen how Judge Brinkema will rule, it is likely that the ball will be kicked over to Congress to determine how to handle inventorship by AI systems. Given the tremendous leaps forward that AI has made in the past decade alone, this issue is likely to continue until changes are made to the Patent Act.