Court Battles in U.S. End for AI InventorshipApril 25, 2023

On April 24, the U.S. Supreme Court  declined to accept the case to consider the question of whether artificial intelligence can be the named inventor on a patent application. Dr. Stephen Thaler, who filed two patent applications in 2019 naming his computer (whom he calls “DABUS”) as the sole inventor, had petitioned the Supreme Court after losses at the U.S. Patent and Trademark Office and at the Federal Circuit Court of Appeals, both of which held that a patent application requires a human inventor.

Thaler filed numerous patent applications around the world naming DABUS as the inventor. He has lost in most jurisdictions, though South Africa and Saudi Arabia both granted him patents. In the United Kingdom, the Supreme Court heard oral arguments in March, but has not yet issued a decision, after the UK Patent Office and lower courts held that the inventor had to be a person.

Thaler has argued that patent protection for AI inventions is in accordance with the U.S. Constitution’s goal of promoting progress of science and the useful arts. Article 1, Section 8, Clause 8. At least two amicus briefs were filed with the Supreme Court, in support of AI inventorship. In one brief, Harvard Law School intellectual property professor Lawrence Lessig explained that denial of protection for AI inventions risks loss of innovations that may be very important and potentially life-saving, and discourages current and future investments of billions of dollars for such developments. Brooklyn Law School also submitted an amicus brief, through its Law Incubator and Policy Clinic, suggesting that the Federal Circuit’s ruling will have a chilling effect on innovation and scientific discovery, as well as negative impacts on research and development for artificial intelligence.

Thaler’s only hope in the U.S. is for Congress to change the law to allow some type of protection for AI inventions. Last fall, Senators Coons (D-Del.) and Tillis (R-N.C.), who are the key leaders of the Senate IP Subcommittee, stated that they are interested in what the future law should be for AI-generated inventions. They are in support of a national commission to be established to consider what changes need to be to the intellectual property laws to incentivize AI innovations and creations.

The U.S. Patent and Trademark Offices is also considering this issue. In February, the USPTO requested comments on AI inventorship, and on April 25 and on May 8  is holding public “listening sessions” on this topic to seek stakeholder input. Recordings of these sessions will be posted. The USPTO states that they “play an important role in incentivizing and protecting innovation, including innovation enabled by artificial intelligence (AI), to ensure continued U.S. leadership in AI and other emerging technologies (ET).”

Prior posts on this topic include:

• Patent Office (Again) Seeking Comments on AI Inventions
• UK Court Decision: Artificial Intelligence Machine Is Not An Inventor
• US Patent Office Sued For Requiring Human Inventor on Patent Applications
• Artificial Intelligence and WIPO

Kirk Hartung is a registered patent attorney, and has practiced with McKee Voorhees & Sease PLC since 1982. Kirk is a member of the Mechanical Patent Practice Group at McKee, Voorhees & Sease, PLC. For additional information please visit www.ipmvs.com or contact Kirk directly via email at kirk.hartung@ipmvs.com.