Member Article

Last year, United States Patent and Trademark Office (USPTO) Director Andrei Iancu noted that artificial intelligence (AI) has the potential to “fundamentally chang[e]” “the legal concepts of inventor or author.”[i] The USPTO recently had cause to consider this issue.

On petition, the USPTO considered whether an applicant can name an AI program as an inventor on a patent application.[ii] The applicant in question listed DABUS—an AI program—as the sole named inventor in the application data sheet.[iii] The issue hinged on whether the statue’s “inventor” includes more than natural persons.

The applicant—a member of the Artificial Inventor Project—argued DABUS “recognized the novelty and salience of the instant invention.”[iv] The Artificial Inventor Project claims that situations exist in which AI performs the “conception” (“the act that qualifies a natural person to be an inventor”) and that “there isn’t a natural person who would traditionally qualify as an inventor.”[v]

The USPTO, however, reasoned that the statutory use of personal pronouns—“[w]hoever,” “himself,” and “herself”—indicate that the statute requires an inventor to be a natural person.[vi] Furthermore, the USPTO relied on Federal Circuit precedent finding that the term “inventor” cannot include “corporations or sovereigns” because only “natural persons” can “perform [the] mental act” of conception.[vii] The USPTO reasoned that the Federal Circuit’s “discussion of conception . . . is equally applicable to machines and indicates that conception—the touchstone of inventorship—must be performed by a natural person.”[viii]

The applicant, of course, may appeal this decision to the Federal Circuit. If that happens, it will be interesting to see if the Federal Circuit agrees that its precedent concerning corporations and sovereigns applies to machines. This remains an area to watch for both legislative and judicial development.

[i] Director Andrei Iancu, Remarks delivered at Artificial Intelligence: Intellectual Property Considerations (Jan. 31, 2019), https://www.uspto.gov/about-us/news-updates/remarks-director-iancu-artificial-intelligence-intellectual-property.

[ii] In re Application of, Petition Decision: Inventorship Limited to Natural Persons (April 27, 2020) (Decision) (regarding U.S. Patent Application No. 16/524,350).

[iii] Id. at 1.

[iv] Id. at 4; Artificial Inventor Project, About the Team, http://artificialinventor.com/about-the-team/ (accessed May 28, 2020).

[v] Artificial Inventor Project, Frequently Asked Questions, http://artificialinventor.com/frequently-asked-questions/ (accessed May 28, 2020).

[vi] Decision at 4; see 35 U.S.C. §§ 101, 115.

[vii] Decision at 5 (citing Univ. of Utah v. Max-Planck-Gesellschaft zur Forderung der Wissenschaften E.V., 734 F.3d 1315, 1323 (Fed. Cir. 2013)).

[viii] Decision at 5.