The United States Court of Appeals for the Federal Circuit recently upheld in Thaler vs. Vidal that artificial intelligence (AI) agents cannot be listed as inventors on a patent because the plain text of the Patent Act requires inventors to be human beings. Patent law jurisprudence around the world has traditionally recognized only humans as inventors of patent applications, and this decision likely ends the US front of Stephane Thaler and the Artificial Intelligence Project years-long global campaign advocating for patent laws to recognize AI agents as patent inventors.
As part of its concerted effort to overturn this convention, Thaler’s group has submitted patent applications listing an artificial intelligence agent named “DABUS” as the sole inventor to various patent offices. Almost all jurisdictions, including Australiathe European Patent Office (EPO), Germanyand the UK denied DABUS claims for not listing a human inventor, confirming that each jurisdiction’s patent law recognizes only humans as inventors. The only exception was South Africabut this country does not have a substantive review process.
Background: USPTO and Federal District Courts Reject AI Inventor
In the United States, a DABUS patent application was rejected during the pre-examination phase, when the United States Patent and Trademark Office (USPTO) reviews certain formal requirements of the new application, such as confirmation that the inventors are correctly listed. The USPTO then issued a Notice of Missing Exhibit Filing for failing to identify an inventor. Thaler requested a review of the gap, claiming that inventorship should be extended to AI agents and as such DABUS was correctly listed as the inventor of the claim.
The USPTO disagreed, and its petitions office issued a decision explaining the USPTO’s position that an AI agent cannot be listed under US patent law. In the ruling, the USPTO pointed out that the wording of various parts of the patent statute (35 USC § 100 and following.) suggest that an inventor must be human. Thaler first challenged that decision in the U.S. District Court for the Eastern District of Virginia, but the district court accepted the USPTO’s findings and rejected its arguments. Thaler then appealed to the United States Court of Appeals for the Federal Circuit.
Statutory language only recognizes human inventors, Federal Circuit says
The Federal Circuit agreed with the District Court and the USPTO that the wording of US patent law recognizes only human inventors. “[T]there is no ambiguity: the Patent Law requires inventors to be natural persons; i.e. human beings.
The Federal Circuit explained that patent law defines a “inventorand “co-inventor” as “individual”. A “person” can be a corporation or other entity, so there must be a narrower term. The term “individual”, according to the Supreme Court, “usually means[s] a human being, a person” distinguishing himself from artificial entities.
The Federal Circuit also noted other signals that Congress intended only human beings to be those “individuals” labeled “inventors.” The law requires inventors to perform certain actions performed only by a human being, such as perform an oath: “the person considers himself to be the original inventor… of an invention claimed in the application.” Further, “the law uses personal pronouns – ‘himself’ and ‘herself’ – to refer to an ‘individual'”, but it “does not also use ‘herself'”, signaling to the court that Congress never intended to allow non-human inventors.
The Federal Circuit’s legislative approach to this case departs from prior decisions by the USPTO, the District Court, and foreign courts. These earlier decisions have focused their analysis on the definition of inventor in terms of “design”. Each decision came to the conclusion that only the human mind conceives an invention. Here, the federal circuit analysis is more fundamental and straightforward – an AI agent is not an “individual” eligible to be an “inventor” – and does not even engage in the discussion of “design “.
Arguments by Stephen Thaler
The Federal Circuit found none of Thaler’s points, referring to several parts of patent law in support of its position that “inventor” should be construed broadly to include agents of IA, as persuasive and upheld the USPTO and District Court decisions.
Thaler first pointed to the use of “anyone” in defining the terms of an inventor in 35 USC § 101: “[w]whoever invents or discovers any new and useful process, machine, manufacture or composition of matter, or any new and useful improvement thereof, may obtain a patent thereon, subject to the conditions and requirements of this title”, and the same term in relation to non-human entities in connection with an infringement 35 USC § 271: “in defining what constitutes infringement, repeatedly uses ‘anyone’ to include corporations and other non-human entities.”
The Federal Circuit, however, was unconvinced by Thaler’s interpretation of “anyone”. Section 101 requires that the putative inventor (ie “anyone”) meet the “conditions and requirements”, which includes the definition of “inventor”. An AI agent would not fulfill this condition. Section 271 describes who infringes a patent and defines acts of infringement, but it does not address who qualifies as an inventor. For example, no one disputes that a non-human corporation can infringe a patent, but cannot be the inventor of a patent.
Thaler also argued that AI agents should qualify as inventors because the patentability of AI-generated inventions would depend on “how the invention was made” in violation of 35 USC § 103. The Federal Circuit also pointed out that § 103 is “not about inventorship.” This provision of § 103 excludes infringement of inventions based on How? ‘Or’ What an invention is made, but § 103 “does not override a provision that specifically deals with who can be an inventor.
Additionally, Thaler invoked the United States Constitution Copyright and patent clause, arguing that allowing AI agents to be listed as inventors “would also further promote the progress of science and useful arts”. According to Thaler, “AI-generated inventions should be patentable to encourage innovation and public disclosure.”
The Federal Circuit found this too speculative and does not weigh favorably against the clear text of the Patent Act. The constitutional clause raised by Thaler grants Congress the legislative power to enact copyright and patent laws. Patent law, passed by Congress within its constitutional jurisdiction, does not recognize AI agents as inventors and “Thaler does not (and cannot) argue that limiting the ownership of inventors to human beings is unconstitutional”.
The Federal Circuit also alluded to the issue of AI as an inventor versus AI as a tool of invention: “if inventions made by human beings with the assistance of AI are eligible for patent protection. The Court left the question unanswered, leaving open the possibility that an invention made by a human being using AI would be patentable. Preliminary comment indicates a consensus within the patent community that under patent law, humans who use an AI agent as a tool are considered inventors as long as the humans have contributed to the design.
Whether there will be legislative impetus to extend inventorship beyond natural human inventors remains to be seen. For now and for the foreseeable future, under US patent law, all patent applications must name only human inventors, even if the affected individuals believe that using an AI model played a key role in the development of the invention.