By Miguel Soto Pachuca
- Introduction
The intersection of Artificial Intelligence (AI) and intellectual property law brings forth one of the most pressing questions for patent systems: Can AI be an inventor? The United States Court of Appeals for the Federal Circuit delivered a decisive ruling in Thaler v. Vidal, affirming that AI cannot be recognized as inventors under U.S. patent law. While the Federal Circuit’s analysis parallels other international court’s reasoning in many respects, the American decision offers distinct insights grounded in the statutory framework of the U.S. Patent Act and principles of American statutory interpretation[1]. This piece discusses the Federal Circuit’s decision, its implications for U.S. patent practice, and the issues it leaves unresolved.
- Factual and Procedural Background
Dr. Stephen Thaler’s challenge to U.S. patent law began in July 2019 when he filed two patent applications with the United States Patent and Trademark Office (USPTO). Both applications listed Device for the Autonomous Bootstrapping of Unified Science (DABUS) as the sole inventor, explicitly stating that “the invention [was] generated by artificial intelligence.” Thaler v. Vidal, 43 F.4th 1207, 1209 (Fed. Cir. 2022). Pursuant to 35 U.S.C § 115[2] Dr. Thaler submitted a sworn oath on DABUS’s behalf. Id. He also attached other documents necessary to establish DABUS as the inventor of the applications. Id. Nevertheless, the USPTO concluded that both applications lacked a valid inventor and therefore were incomplete. Id at 1210. Thaler’s petitions were also denied, since the USPTO stated that “a machine does not qualify as an inventor.” Id. Thaler pursued judicial review of the USPTO’s decision under the Administrative Procedure Act (APA)[3]. However, both parties agreed to move their dispute to the District Court. The District Court granted USPTO’s motion for summary judgment holding that an “inventor” under the Patent Act must be an “individual,” and that the plain meaning of “individual” refers to a natural person.” Id. The case was appealed by Thaler to the U.S Court of Appeals for the Federal Circuit.
- The Federal Circuit’s Analysis
Judge Stark wrote for a unanimous three-judge panel and adopted a textualist approach to interpret the Patent Act’s definition of “inventor.” The opinion begins by establishing the framework: “In resolving disputes of statutory interpretation, we “begin[ ] with the statutory text, and end[ ] there as well if the text is unambiguous.”” Id. (quoting BedRoc Ltd. v. United States, 541 U.S. 176, 183, 124 S.Ct. 1587, 158 L.Ed.2d 338 (2004)). The definition for “inventor” provided by the Patent Act in 35 U.S.C § 100(f) is “the individual or, if a joint invention, the individuals collectively who invented or discovered the subject matter of the invention.” The court observed that throughout the provisions describing the requirements for inventors applying for patents, the statute consistently refers to inventors and co-inventors as “individuals”.
Because the Patent Act does not explicitly define “individual,” the Federal Circuit turned to Supreme Court precedent to determine its meaning. The court cited Mohamad v. Palestinian Auth., 566 U.S. 449 (2012), and explained that when “individual” is used as a noun, it ordinarily means “a human being, a person” Thaler, 43 F.4th at 1210 (quoting Mohamad v. Palestinian Auth., 566 U.S. 449, 454 132 S.Ct. 1702 (2012)). The Supreme Court’s understanding aligns with everyday usage, “[w]e say the ‘individual went to the store,’ ‘the individual left the room,’ and ‘the individual took the car,’ each time referring unmistakably to a natural person.” Id. at 1211. Other sources, including dictionaries, reinforce this meaning of the word “individual.”[4] Moreover, referencing the Dictionary Act, 1 U.S.C § 1, which provides that use of the words ‘person’ and ‘whoever’ broadly include “corporations, companies, associations, firms, partnerships, societies, and joint stock companies, as well as individuals.”[5] Following the Supreme Court’s guidance in previous precedent cases, alongside other sources, the Federal Circuit held that ‘individual’ refers to human beings, “unless there is ‘some indication Congress intended’ a different meaning” Thaler, 43 F.4th at 1211 (quoting Mohamad, 566 U.S. at 455). The court found no such indication in the Patent Act, and instead found the use of personal pronouns like himself and herself to refer to individuals.
Dr. Thaler advanced policy arguments that permitting AI inventorship would encourage innovation and public disclosure of inventions. The Federal Circuit gave these arguments little weight , characterizing them as “speculative” and lacking “a basis in the text of the Patent Act and in the record.” Id. at 1213. The court emphasized that the statutory text was unambiguous and therefore declined to “elevate vague invocations of statutory purpose over the words Congress chose.” Id. (quoting Southwest Airlines Co. v. Saxon, 142 S. Ct. 1783, 1792-93 (2022)). This aspect of the decision reflects a fundamental tenet of textualist jurisprudence: when statutory language is clear, courts should not override that clarity based on perceived policy considerations or presumed legislative purpose. The Federal Circuit effectively told Dr. Thaler that his policy arguments, however compelling they might be, must be addressed to Congress rather than the courts.
- Implications
The Federal Circuit’s decision demonstrates admirable consistency with established principles of statutory interpretation. By anchoring its analysis firmly in the text of the Patent Act and Supreme Court precedents interpreting similar statutory language, the court provided a clear, comprehensible rule: inventors must be human beings. This approach respects separation of powers by leaving policy decisions about whether to expand patent protection to AI-generated inventions to the legislative branch.
In practice, AI typically functions as a sophisticated tool that benefits human creativity rather than replacing it. People often use AI algorithms to analyze vast datasets or identify patterns. In these collaborative scenarios, determining inventorship becomes considerably more nuanced than in the Thaler case. However, the Federal Circuit’s silence on AI-assisted invention leaves critical questions unanswered. Significantly, the court noted: “Moreover, we are not confronted today with the question of whether inventions made by human beings with the assistance of AI are eligible for patent protection.” Id. This crucial statement acknowledges the distinction between purely autonomous AI inventions (as claimed by Dr. Thaler) and AI-assisted human invention, leaving the latter question unanswered. What amount of human contribution is sufficient to qualify someone as an inventor when AI also plays a substantial role in generating the inventive concept?
The Thaler decision, while focusing on whether AI can be an inventor, does not explicitly engage with how its holding interacts with existing inventorship doctrine. Under Federal Circuit precedent, conception is “the touchstone of inventorship,” requiring formation in the mind of the inventor. Burroughs Wellcome Co. v. Barr Labs., Inc., 40 F.3d 1223, 1227-28 (Fed. Cir. 1994). This conception requirement necessarily implies mental activity by a human inventor. Yet the Thaler opinion does not elaborate on whether this existing framework already precluded AI inventorship independent of the statutory definition of “individual.” The court’s exclusive focus on textual analysis leaves unexplored whether foundational inventorship principles would have reached the same result even absent the specific statutory language.
This uncertainty creates practical challenges for patent prosecutors. Given the uncertainty surrounding how much AI usage is too much, how should prosecutors determine whether a person’s AI usage puts a constraint on the patent process? Should each person disclose the role of AI systems in the inventive process? If so, how detailed must such disclosure be? Could failure to disclose such AI usage be subject to penalties? The Thaler decision does not address these questions, though they will inevitably arise as AI systems become more sophisticated and their role in innovation more substantial.
[1] Thaler v. Comptroller-General of Patents, Designs and Trademarks [2023] UKSC 49, [2021] ECWA (Civ.) 1374 (appeal taken from Eng.).
[2] USPTO, MPEP § 602 (8th ed. Rev. 01.2024).
[3]5 U.S.C §§ 551-559.
[4] Individual Oxford English Dictionary (2022) which provides a first definition for “individual” as “single human being”, https://www.dictionary.com/browse/individual
[5]1 U.S.C § 1.