AI As Inventor? Federal Circuit Says Not So Fast

Peter Tirella | 11.29.22

Interest in artificial intelligence (AI)-developed works of art and science have skyrocketed in recent months. From algorithms that can produce new digital works from cleverly worded text inputs to code that can help self-driving cars navigate through urban environments, artificial intelligence’s prevalence is hard to ignore. While breakthroughs derived from AI are exciting, their existence poses a fundamental question: who (or what) is the true ​“inventor” of the development?

For example, when a person enters a string of text into a popular AI ​“art” generator, such as DALL‑E, does that person get to claim that they are the true creator, or does the AI generator have claim to that title? Relatedly, if an AI creates a novel invention, can the AI really be the ​“inventor”? While this inquiry may involve metaphysical questions about the nature of ownership, the Federal Circuit recently weighed in on the question as it relates to patent prosecution in Thaler v. Vidal, 43 F.4th 1207 (Fed. Cir. 2022).

At issue in Thaler were two putative inventions created by inventor Stephen Thaler’s AI system named ​“DABUS.” Even though Thaler developed DABUS on his own, he claimed that he had no personal involvement in developing either the ​“Neural Flame” or ​“Fractal Container” inventions. Consequently, Thaler listed DABUS as the sole inventor on each patent application, saying in each that ​“the invention [was] generated by artificial intelligence.” 

Upon review, the USPTO concluded that each application was incomplete because it ​“lacked a valid inventor.” After a period of back-and-forth, Thaler pursued judicial review of the USPTO’s decision, eventually leading to an appeal with the Federal Circuit to consider the sole question of ​“whether an AI software system can be an ​‘inventor’ under the Patent Act.”

In its opinion, the Federal Circuit performed a textual analysis of Patent Act language, eventually concluding that the term ​“individual,” as used in the Patent Act, explicitly referred to a human being. So, the court held that each patent application must name one or more natural persons as the ​“inventor” to follow statutory requirements. This tracks because, among other requirements, the Patent Act also requires every individual listed on a patent application to have contributed, in at least a small part, to the invention’s conception.

Even though Thaler successfully prosecuted patents in DABUS’ name in other countries such as South Africa, United States law currently bars Thaler’s AI from being considered an inventor. Congress doesn’t appear to have any strong interest in amending the Patent Act, but this may change as AI systems become more common and powerful. Only time will tell.