Striking a blow to patent applicants seeking to assert inventorship by artificial intelligence (“AI”) systems, the U.S. District Court for the Eastern District of Virginia ruled on September 3, 2021 that an AI machine cannot qualify as an “inventor” under the Patent Act.  The fight is now expected to move to the Federal Circuit on appeal.

Proskauer has been closely monitoring the quickly-developing legal treatment of AI systems, especially in view of their implications for life sciences patents.  AI’s presence in life sciences innovation is well established, for example, to predict biological targets of prospective drug molecules and to identify drug design candidates (among many other applications).  As we reported in August, two countries—Australia and South Africa—have already permitted AI systems to qualify as “inventors” in patent applications.  However, hope for a worldwide trend have been dashed, at least for now.

Patent applicant Stephen Thaler and his AI system called DABUS (“Device for Autonomous Bootstrapping of Unified Sentience”) is at the center of these developments.  Naming DABUS as an inventor of his applications, Thaler obtained a South African patent without debate, and successfully argued to an Australian court that the Australia Patents Act should have a flexible interpretation of “inventorship” to include AI, because such interpretation would promote innovation and further pharmaceutical research.  The USPTO, however, rejected Thaler’s application, concluding that an inventor must be a natural person under the Patent Act.  Thaler then asked the U.S. District Court for the Eastern District of Virginia to vacate the USPTO’s decision and reinstate his patent application.

The Court, on motions for summary judgment, affirmed the USPTO’s determination that an inventor must be a natural person.  Focusing on the “plain language” of the 2011 America Invents Act, which provided “an explicit statutory definition for the term ‘inventor,’” the Court’s decision came down to the meaning of a single word: “individual.”

The Court found that meaning in a Supreme Court decision construing the term “individual” in the Torture Victim Protection Act (“TVPA”) to mean “natural person[].”  Although concerning different subject matter than the Patent Act, the District Court applied the Supreme Court’s definition of “individual” because, like the TVPA, the Patent Act used the term “individual” in its “ordinary usage,” which was “to refer to a human being.”  Indeed, 35 U.S.C. § 115(b) references the “individual” as “himself or herself,” which the Court found evidenced Congress’s clear intent to “referenc[e] a natural person.”  Further supporting this interpretation, according to the Court, were the Federal Circuit’s “consistent holdings” (albeit in a different context) that “inventors must be natural persons.”

Thaler, however, encouraged the Court to interpret inventorship in a manner “consistent with the Founders’ intent in enacting the Patent and Copyright Clause,” which, according to Thaler, was “to promote disclosure of information and commercialization of new technologies.”  Taking too literal a reading of “inventor,” argued Thaler, would frustrate this intent, particularly where “it is unlikely that Congress anticipated and legislated for the specific circumstances at issue.”  Thaler warned, “excluding an entire class of inventions from patentability would undermine the patent system,” as AI-generated inventions may “one day become the primary source of innovation.”  The Court was not swayed by these arguments, which the Court characterized as based in policy, rather than law.  According to the Court, Thaler’s positions could not “override the plain meaning of a statutory term,” and in any event, “[m]atters of policy are for Congress, not the courts, to decide.”  Had Congress intended AI systems to be considered “inventors,” the Court found, Congress could have explicitly included AI systems in the definition, added in 2011, “when artificial intelligence was already in existence.”

The decision, unfortunately, leaves unresolved how to obtain patent protection on innovations generated by AI systems.  However, the USPTO’s summary judgment brief hinted at a potential solution—“the use of a machine as a tool by natural person(s) does not generally preclude natural person(s) from qualifying as an inventor or joint inventors if the natural person(s) contributed to the conception of the claimed invention.”  That assertion, of course, begs the question of what happens when no natural person contributes to the invention.

Thaler has indicated that he intends to appeal the District Court’s decision to the Federal Circuit.  We will continue to monitor and report developments on this novel legal issue.  The case is Thaler v. Hirshfeld, No. 1:20-cv-00903, pending in the U.S. District Court for the Eastern District of Virginia, a copy of which can be found here.

Print:
EmailTweetLikeLinkedIn
Photo of Gourdin Sirles Gourdin Sirles

Gourdin W. Sirles is an associate in the Litigation Department, where he focuses on patent and intellectual property litigations.  From large pharmaceutical litigations (including litigations related to the Biologics Price Competition and Innovation Act and Hatch-Waxman Act), to patent litigations related to electronics…

Gourdin W. Sirles is an associate in the Litigation Department, where he focuses on patent and intellectual property litigations.  From large pharmaceutical litigations (including litigations related to the Biologics Price Competition and Innovation Act and Hatch-Waxman Act), to patent litigations related to electronics, software, Microelectromechanical systems and components thereof, and financial services products, Gourdin’s intellectual property litigation experience has covered a broad variety of technologies and specialties.

Gourdin has experience in all aspects of the litigation process, including trials, Markman hearings, fact and expert discovery, depositions, case preparation and strategy, motion practice, and settlement negotiation. Gourdin is also well-versed in e-discovery, including forensic document collections, e-discovery platforms, management of contract attorney teams, document review, and production.

In addition to patent and intellectual property litigations, Gourdin’s practice has also encompassed a variety of other legal matters, including pro bono immigration matters, bankruptcy law, toxic tort, employment litigation, commercial disputes, and campaign finance compliance and other election-related laws on the state and federal level.

Photo of Baldassare Vinti Baldassare Vinti

Baldassare (“Baldo”) Vinti co-chairs Proskauer’s Intellectual Property Litigation Group.

Baldo’s practice focuses on litigating patent, false advertising, trade secret, life sciences, trademark and contractual matters in federal and state courts and before the International Trade Commission. He is a seasoned trial attorney responsible…

Baldassare (“Baldo”) Vinti co-chairs Proskauer’s Intellectual Property Litigation Group.

Baldo’s practice focuses on litigating patent, false advertising, trade secret, life sciences, trademark and contractual matters in federal and state courts and before the International Trade Commission. He is a seasoned trial attorney responsible for all aspects of litigation, including Markman hearings, appeals before the Federal Circuit, case preparation and strategy, depositions, motion practice, and settlement negotiations. He has represented clients in high-stakes matters involving a broad range of technologies, including medical devices, diagnostics, immunoassays, prosthetics, pharmaceuticals, dental implants, electronic medical records systems, encryption technology, wound dressings, digital video compression, electronic book delivery and security systems, mobile media technologies, navigation and location-based services, bandwidth management, bar code scanning, lasers , and other technologies. Baldo has represented numerous major corporations, including Arkema S.A., British Telecommunications PLC, Church & Dwight Co., Inc., Henry Schein, Inc., Maidenform Brands Inc., Mitsubishi Electric Corp., Ossur North America Inc., Panasonic Corp., Sony Corp., Welch Foods, Inc., and Zenith Electronics LLC.

In addition, Baldo regularly handles transactional work, including intellectual property due diligence, licensing, intellectual property structural transactions, patentability studies, infringement/non-infringement opinions, and client counseling in intellectual property matters.

Baldo is an author and frequent commentator on patent issues pertaining to medical devices and a host of other intellectual property topics, and has been quoted in the National Law Journal, Bloomberg BNA, Law360, Westlaw Journal and Inside Counsel magazine. He is also a regular contributor of articles published in Medical Product Outsourcing magazine that deal with the medical device industry.

Baldo served as a judicial intern for Hon. John E. Sprizzo of the United States District Court for the Southern District of New York and for Hon. Charles A. LaTorella of the New York Supreme Court.