U.S. Supreme Court Dismisses Challenge to Patent Office’s Approach to Inventors of Inventions Created by AI Systems

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Recent developments in AI technology have increased the use of AI for various concepts, development, research, and even creating lines of software code in response to human input. This has led to an increase in patent applications being filed with the United States Patent and Trademark Office (“USPTO”), seeking patents with varying degrees of contribution from AI tools. This raises questions about whether and to what extent inventions containing contributions from AI are eligible for US patent protection. There are many underlying issues with this question, but this update specifically focuses on whether an AI can be listed as an inventor in a US patent.

On April 24, 2023, the Supreme Court declined to hear a petition that raised the question of whether AI could be the named inventor of a U.S. patent. Petitioner argues that a company cannot list an AI as an inventor or co-inventor of a U.S. patent, in accordance with existing jurisprudence, and has asked the Supreme Court to review this case and seek to identify AI as an inventor or co-inventor. It was requested to conclude that it could be nominated as An important point is that currently, patent applicants cannot list “AI” as a named inventor in US patent applications.

Background and recent SCOTUS denials

Stephen Thaler develops and runs AI systems that generate inventions. His one such system is known as the Integrated Science Autonomous Bootstrapping Device or “DABUS”. DABUS is a collection of source code and software programs. In July 2019, Thaler sought patent protection for two of his inventions of his DABUS, U.S. Patent Application Nos. 16/524,350 (“Neural Flame”) and 16/524,532 (“Fractal Container”) of his I applied for two patents. Thaler lists his DABUS as the sole inventor in both applications and writes in both applications: [was] Generated by artificial intelligence. Thaler filed a statement on behalf of DABUS that he acted as AI’s “swearing-in”, assigning himself all rights to the invention.

The USPTO has rejected Thaler’s patent application. Thaler conducted judicial review of the USPTO’s decision under the Administrative Procedure Act in the United States District Court for the Eastern District of Virginia. In district court, the parties agreed to have the court rule on their challenges on the basis of administrative records and filed cross motions for summary judgment. The court agreed with his USPTO, concluding that the application had been correctly dismissed for failing to list a human inventor, and granted summary judgment. Thaler subsequently appealed to the Federal Circuit, which upheld the district court’s decision.

The Court of Appeals for the Federal Circuit noted that patent law defines “inventor” as “inventor.” individual or, in the case of joint invention, individual Collectively the person who invented or discovered the subject matter of an invention. 35 USC § 100(f) (emphasis added). The Federal Circuit further said that patent law does not define “individual,” but the Supreme Court did not give any indication that Congress intended to read it differently and that patent law had no intention of anything. He held that the word “individual” refers to a human being unless there is a Indicates a deviation from the default. Furthermore, the court concluded that the “inventor” must be a human being. natural person— not corporations or sovereigns.

Thaler filed a writ petition with the United States Supreme Court, but the court refused to hear Thaler’s challenge.

best practice

Patent applicants can take steps to ensure that their inventions comply with U.S. patent law by listing only human inventors in all patent applications. The court and her USPTO provide no guidance as to whether and to what extent contributions to AI affect patentability. Inventors and businesses are wise to keep an eye on this rapidly developing area of ​​law. In the meantime, patent applicants must maintain compliance with current patent requirements, including those relating to disclosure, written description, novelty, obviousness, and subject matter eligibility. Companies and inventors can consider participating in future USPTO stakeholder hearing sessions. We are committed to keeping our clients informed of the latest guidance and regulations, including those related to working within the evolving legal environment for AI and managing the development and protection of intellectual property across multiple jurisdictions. Keep up with the development of