US court rules, once again, that AI software can’t be listed as inventor on a patent

The US Court of Appeals for the Federal Circuit has ruled that AI software cannot be a registered inventor of a US patent, Reuters reports, though the issue could be subject to further appeal.

The legal challenge came from Dr. Stephen Thaler, who filed two patent applications naming an AI program called “DABUS” as the inventor in 2019. The US Patent and Trademark Office (USPTO) denied the patents, and the District Court agreed with that finding after an appeal. Thaler appealed again in August 2022 over whether an AI can qualify as an “inventor” under US patent law. In response, the court ruled that an inventor must be a “natural person.”

The key rationale for the recent denial stems from the definition of “inventor” in the Patent Act, which states the inventor must be an “individual.” The Court of Appeals cited the Supreme Court as defining an “individual” as a human being, according to Reuters. That rules out machines, animals, and software such as Thaler’s “DABUS” as being defined as the inventor of a US patent.

“DABUS” (which stands for “Device for the Autonomous Bootstrapping of Unified Science”) is a piece of software designed to create patentable inventions. It’s the keystone to Thaler’s plan to “challenge the international patents regime,” according to his website. Thaler’s group has filed patents in at least 15 countries around the world with mixed results so far. Australia appears to be moving in his favor, and South Africa granted one of Thaler’s AI-generated patents with DABUS as the inventor.

However, Thaler’s efforts have stalled elsewhere. Thaler’s two rejected US patent applications are numbered 16/524,350 and 16/524,532 for a “Fractal Container” (basically a cup with a fractal-inspired design) and “Neural Flame” (devices and methods “for attracting enhanced attention”), respectively. You can read short descriptions of them on Thaler’s website.

Thaler is no stranger to AI-related IP controversy. In an unrelated petition handled by a different US government office, Thaler attempted to register a US copyright to an AI program in 2019, which was rejected and denied again after a review earlier this year. (A refresher: Patents are registrations of technical inventions, while copyrights are registrations of artistic or literary works.)

It’s important to point out that in Thaler’s 2019 copyright case, the US Copyright Office took issue with an AI owning the copyright instead of a human. Thaler could have easily registered the AI-generated artwork under his own name, and the same might be the case with the AI-generated patents, if the patents passed review unrelated to AI authorship criteria.

As Reuters explains, “If AI is used as a tool to invent, then, like traditional inventions, the use of tools to carry out an invention does not bar an applicant’s claim of inventorship.” But if the role of AI rises to the level of inventor, the invention cannot receive patent protection, as it stands under the most recent ruling. Thaler requested a rehearing of the case at the Federal Circuit level, so the story is not over yet.