Following Australia's reversal, the US Court of Appeals for the Federal Circuit has recently delivered another nail in the DABUS coffin, finding that an artificial intelligence (AI) system cannot be named as an inventor on patent applications.
This precedential decision brings the US in line with most other major jurisdictions (with the notable exception of South Africa), bringing yet another setback for the Stephen Thaler's ongoing global struggle to have his AI creativity machine, better known as DABUS, recognised as the inventor of two patents first filed in 2019.
The patent applications in question concern a flexible food container based on fractal geometry, and an LED light beacon possessing a lacunar pulse train to generate a ‘neural flame’, both alleged to have been designed by DABUS.
The United States Patent and Trademark Office (USPTO) had initially refused Thaler's attempt to have DABUS recorded as the sole inventor, concluding that both patent applications lacked a valid inventor and accordingly were deemed incomplete.
Thaler subsequently petitioned the USPTO director, but this fell on deaf ears, with the USPTO doubling down and stating “a machine does not qualify as an inventor”, with an inventor being limited to “natural persons”.
Further reconsideration was unsuccessfully sought, with Thaler's only remaining option to pursue judicial review of the USPTO’s final decision. Unfortunately, the US District Court for the Eastern District of Virginia agreed with the earlier decision, granting summary judgment in the USPTO's favour.
The USPTO's interpretation was upheld by the Federal Circuit in early August, affirming that there was no “ambiguity” in the patent law requiring an inventor to be a natural person.
Whilst it was noted that the US Supreme Court has previously held that a statute’s references to an “individual” refers to “human beings unless there is some indication Congress intended a different reading”, Circuit Judge Leonard Stark declared "nothing in the Patent Act indicates Congress intended to deviate from the default meaning... to the contrary, the rest of the Patent Act supports the conclusion that ‘individual’ in the Act refers to human beings.”
The Court was also not swayed by Thaler's argument of the South African grant, handed down last year, dismissing this line of argumentation as irrelevant to the US Patent Act.
Although this outcome was seen as unsurprising, and arguably a foregone conclusion given the decision of the Eastern District and those of corresponding jurisdictions such as the UK and the EPO, some questions still remain outstanding.
Namely, if an AI could feasibly be recorded as a co-inventor if an invention is purportedly made with its assistance. Also, in the unlikely event that other jurisdictions follow Australia's decision to allow a co-inventor, US Congress may have its hand forced to change the law to meet new competition standards.
“When a statute unambiguously and directly answers the question before us, our analysis does not stray beyond the plain text,” concluded Circuit Judge Stark. “Here, Congress has determined that only a natural person can be an inventor, so AI cannot be.”