UPDATE ON ARTIFICIAL INTELLIGENCE (AI): USPTO FILES OPPOSITION BRIEF AT THE COURT OF APPEALS FOR THE FEDERAL CIRCUIT (CAFC) TO AFFIRM DECISION THAT AI CANNOT QUALIFY AS AN “INVENTOR.”
March 15, 2022
March 15, 2022 - The case at issue is STEPHEN THALER, Plaintiff-Appellant, v. ANDREW HIRSHFELD, Performing the Functions and Duties of the Under Secretary of Commerce for Intellectual Property and Director of the United States Patent and Trademark Office (USPTO), UNITED STATES PATENT AND TRADEMARK OFFICE, Docket 21-2347 (Thaler v. Hirshfeld). It originated from the Eastern District of Virginia under Docket # 1:20-cv-00903.
On September 3, 2021 the Eastern District of Virginia, ruled that under the Patent Act, an Artificial Intelligence (AI) machine cannot qualify as an “inventor.” The case involved two (2) patent applications that Stephen Thaler filed with the United States Patent & Trademark Office (USPTO) namely, U.S. Application Serial Nos. 16/524,350 (the ‘350 application) and 16/524,532 (the ‘532 application). Thaler attempted to obtain a patent for an invention created by his AI system called DABUS (“Device for Autonomous Bootstrapping of Unified Sentence). The USPTO examiner rejected the applications. Thaler took his case to the Eastern District of Virginia. In his one-count complaint brought under the Administrative Procedure Act (“APA”), Thaler alleges that the refusal of the USPTO to process the applications was “arbitrary, capricious, an abuse of discretion and not in accordance with the law; unsupported by substantial evidence and in excess of the USPTO statutory authority.” Thaler also sought a declaration that a patent application for an AI-generated invention should not be rejected on the basis that no natural person is identified as an inventor.
On Feb 16, 2022, Stephen Thaler appealed to the Court of Appeals for the Federal Circuit (CAFC) from the adverse decision of the lower court. According to the appeal, Thaler wants the CFAC to decide “whether the District Court correctly concluded that an artificial intelligence device comprised solely of source code cannot qualify as an “inventor” under the Patent Act, where the plain statutory language specifically defines “inventor” to be an “individual” and refers to an “inventor” using personal pronouns.” The USPTO opposes arguing that under the “plain language Congress chose to incorporate in the Patent Act,” only a human being can be considered an “inventor.” The USPTO first noted that the definitions of “inventor” and “joint inventor” under the Patent Act both unequivocally refer only to an “individual” or “individuals.” For example, “inventor” is defined under the Act as “the individual or, if a joint invention, the individuals collectively who invented or discovered the subject matter of the invention.” The USPTO argued that under the “plain language Congress chose to incorporate in the Patent Act,” only a human being can be considered an “inventor.”
In our previous posting, we have discussed recent inventorship issues surrounding Artificial Intelligence (“AI”). We indicated that two (2) recent Court of Appeals for the Federal Circuit (CAFC) decisions, i.e., Berkheimer v. HP and Aatrix Software v. Green Shades Software have not provided any bright-line rule concerning adjudication of AI. We will continue to monitor this case.
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