Brooke Catalano

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The Court in Thaler v. Hirshfeld stated, “as technology evolves, there may come a time when artificial intelligence reaches a level of sophistication such that it might satisfy accepted meanings of inventorship . . . .”[1] The time is now. In 21^st century patent law, Artificial Intelligence (“AI”) has become a technique of discovery and invention. Currently, United States jurisprudence does not recognize AI computer systems as “inventors” under the Patent Act.[2] Courts have consistently followed the traditional narrow interpretation of “individual”—holding non-humans cannot be granted patent rights.[3] However, with the rapid advancement of AI technology, denying AI computer systems capable of creating independently with minimal human intervention would be inconsistent with patent policy.[4] This raises the legal question of how to handle these inventions partially or fully created by AI computer systems and whether our current patent system is equipped to handle the issue. The time has come for Congress and the Courts to intervene and conclude AI computer systems should be considered inventors for inventorship purposes.[5]

Dr. Stephen Thaler, an innovator in the area of AI, brought this issue to the Court’s attention when he listed Device for the Autonomous Bootstrapping of Unified Sentience (“DABUS”), an AI computer system, as the inventor responsible for creating two inventions.[6] The U.S. District Court in Thaler ruled on the issue and incorrectly interpreted the Patent Act because limiting the scope of inventorship to natural persons goes against policies surrounding patent law.[7] Accordingly, the Court of Appeals for the Federal Circuit should accept the appeal and remand the case back to the District Court with instructions to take a purposivist approach; and conclude that the policy considerations outweigh the United States Patent and Trademark Office’s (“USPTO”) narrow interpretation—one which is inconsistent with Congress’s intent. Regardless of how the court rules, Congress must act.

This Note discusses the Thaler case and its successful counterpart filings in other countries. Federal Courts in South Africa and Australia broke away from previous United States holdings and concluded non-humans such as AI can be legally recognized inventors in patent applications. Part I addresses why the Court in Thaler wrongfully interpreted Title 35 of the Patent Act—deviating from long established patent policy. Part II discusses the successful international cases that can guide the handling of AI computer systems as non-human inventors in the United States because one of the biggest fuels of patent innovation is global harmonization.[8] Part III proposes new language to the Patent Act to promote public discloser and proper attribution which would align with the Act’s intended purpose. Finally, part IV concludes that the Court’s interpretation of the Patent Act in Thaler was incorrect, and Congress and the Courts must act.

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[1] Thaler v. Hirshfeld, No. 1:20cv903, 2021 F.Supp.3d. WL 3934803, at *1 (E.D.Va., Sept 21, 2021).

[2] Robert A. Matthews, Jr, Inventorship defined–Artificial Intelligence Machines as “Inventors,” § 26:1.50 Annotated Patent Digest (last visited Dec. 2021).

[3] Thaler, slip op. at 6.

[4] Arthur Miller, Can Machines be More Creative than Humans? The guardian (Mar. 2. 2019) https://www.theguardian.com/technology/2019/mar/04/can-machines-be-more-creative-than-humans

[5] Ryan Abbott, I Think, Therefore I Invent: Creative Computers and the Future of Patent Law, 57 B.C. L. Rev. 1079, 1087 (2016).

[6] Alexandra Jones, Artificial Intelligence can now be Recognized as an Inventor after Historic Australian Court Decision, ABC News (Aug. 2, 2021) (https://www.abc.net.au/news/2021-08-01/historic-decision-allows-ai-to-be-recognised-as-an-inventor/100339264) (noting that Dr. Thaler filed multi-jurisdictional patent applications listing DABUS as the inventor); See Ryan Abbott, I Think, Therefore I Invent: Creative Computers and the Future of Patent Law, 57 B.C. L. Rev. 1079 (2016) (acknowledging the issue of AI-inventorship has not been addressed until now).

[7] Memorandum of Law in Support of Plaintiff’s Opposition to Defendants’ Motion for Summary Judgment & Rely to Defendants’ Opposition to Plaintiff’s Motion for Summary Judgment, Thaler v. Hirshfeld, No. 1:20cv903, 2021 F.Supp.3d. WL 3934803 (E.D.Va., Sept 21, 2021) (arguing AI inventorship rights for AI machines would align with patent policy by promoting public disclosure and proper attribution).

[8] See generally Randy L. Campbell, Global Patent Law Harmonization: Benefits and Implementation, 13:2 Ind. Int’l & Comp. L. Rev, 605 (2013) (discussing the benefits of worldwide unity in patent globalization). One of the main goals of the World Intellectual Property Organization (“WIPO”) is to “lead the development of a balanced and effective international IP system that enables innovation and creativity for the benefit of all.” WIPO, Inside WIPO (Mar. 17, 2022) http://www.wipo.int/about-wipo/en/.