US Patent Office Sued For Requiring Human Inventor on Patent ApplicationsAugust 14, 2020

On August 6, 2020, Stephen Thaler sued the United States Patent and Trademark Office (USPTO) in the United States District Court for the Eastern District of Virginia, case number 1:20-cv-00903 for requiring him to name a natural person as the inventor on two patent applications which he filed relating to a light beacon and a beverage container.  Thaler’s applications (serial numbers 16/524,350 and 16/524,532, both filed on July 29, 2019) named his computer, which he calls DABUS, as the sole inventor.  The USPTO asserted that the applications had missing parts, since a person was not named as an inventor, and declined to examine the applications.  The USPTO reasoned that statutory language refers to individuals as inventors, corporations and sovereigns cannot be inventors, and the act of inventorship requires conception which machines cannot perform, citing various patent statutes and case authorities.

Thaler explains that he is in the business of developing advanced AI systems that are capable of generating patentable output in the absence of a person who otherwise meets inventorship criteria. Thaler’s lawsuit alleges that the USPTO’s prohibition against inventions created by artificial intelligence (AI) creates a new requirement for patent protection, that is, a human inventor.  He asserts that patents for AI generated inventions is consistent with the U.S. Constitution, Article I, Section 8, Clause 8, which which allows Congress to promote the progress of science and the useful arts.   The same incentives provided for human inventions exists for AI inventions.  According to Thaler, denying patent on AI inventions undermines the patent system by discouraging development of socially valuable inventions.

Thaler further states that there is no evidence that Congress ever intended to prohibit patent to inventions by AI, particularly when the patent statutes were written when AI inventions were unforeseeable. Thaler cites the Supreme Court case J.E.M. AG Supply, Inc. v. Pioneer Hi-Bred Int’l, Inc., 534 U. S. 124, 135 (2001), where the Court stated that patentable subject matter encompasses new and unforeseen subject matter. (It is noted that this decision was favorable to Pioneer, who was represented by McKee, Voorhees and Sease, PLC, and partner Edmund J. Sease argued the case at the U.S. Supreme Court).

We will continue to watch this case, and this interesting area of development in the patent laws.  See also, my published article published on May 21, 2020 in IP Watchdog entitled “Dear USPTO: Patents for Inventions by AI Must Be Allowed”

Kirk Hartung is Chair of the Mechanical Patent Practice Group at McKee, Voorhees & Sease, PLC. For additional information please visit or contact Kirk directly via email at

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