artificial intelligence : CAFC Alert

Artificial Intelligence Systems Cannot be Inventors on a Patent Application

| October 5, 2022

Thaler v. Vidal

Decided: August 5, 2022

Moore, Taranto and Stark. Opinion by Stark


This case decided the issue of whether an artificial intelligence (AI) software system can be an inventor on a patent application. The USPTO concluded that an inventor is limited to natural persons. The U.S. District Court for the Eastern District of Virginia agreed and granted the USPTO summary judgment. The CAFC affirmed the District Court concluding that an inventor must be a natural person.


Thaler developed the Device for the Autonomous Bootstrapping of Unified Science which is referred to as “DABUS.” DABUS is described as “a collection of source code or programming and a software program.” Thaler filed two patent applications at the USPTO listing DABUS as the sole inventor. Thaler stated that he did not contribute to the conception of the inventions and that any person having skill in the art could have taken DABUS’ output and reduced the ideas in the applications to practice.

For the inventor’s last name, Thaler wrote that “the invention was generated by artificial intelligence.” For the oath/declaration requirement, Thaler submitted a statement on behalf of DABUS. In a Statement on Inventorship, Thaler explained that DABUS was “a particular type of connectionist artificial intelligence” called a “Creativity Machine.” Thaler also filed an assignment assigning all of DABUS’ rights to himself.

The PTO mailed a Notice to File Missing Parts for each application requiring that Thaler identify valid inventors. Thaler petitioned the PTO to vacate the notices. However, the PTO denied the petitions on the ground that “a machine does not qualify as an inventor.” Thaler then challenged the petition decision in District Court. The District Court granted the PTO’s motion for summary judgment concluding that “an ‘inventor’ under the Patent Act must be an ‘individual’ and the plain meaning of ‘individual’ as used in the statute is a natural person.”

Thaler appealed the District Court’s decision to the CAFC. The CAFC stated that “[t]he sole issue on appeal is whether an AI software system can be an ‘inventor’ under the Patent Act. The CAFC first looked to the plain meaning of the Patent Act. The Patent Act defines an “inventor” as “the individual or, if a joint invention, the individuals collectively who invented or discovered the subject matter of the invention.” 35 U.S.C. 100(f). Citing § 115, the CAFC stated that the Patent Act also consistently refers to inventors as “individuals,” and uses personal pronouns “himself” and “herself” to refer to an “individual.” The Patent Act does not define “individuals,” but the CAFC looked to Supreme Court precedent and stated that “as the Supreme Court has explained, when used as a noun, ‘individual’ ordinarily means a human being, a person.

The CAFC also looked to dictionary definitions of “individual” which is defined as a human being. The CAFC also referred to the Dictionary Act which states that “person” and “whoever” broadly include “unless the context dictates otherwise,” “corporations, companies, associations, firms, partnerships, societies, and joint stock companies, as well as individuals.” 1 U.S.C. § 1. The CAFC interprets the Dictionary Act as meaning that Congress understands “individual”  to mean natural persons unless otherwise noted.

Thaler argued that the Patent Act uses “whoever” in §§ 101 and 271. With regard to § 101, the CAFC stated that this section uses “whoever,” but § 101 also states that patents must satisfy the “conditions and requirements” of Title 35 of the U.S. Code, including the definition of inventor. Regarding § 271, the CAFC stated that this section refers to infringement, however, “That non-humans may infringe patents does not tell us anything about whether non-humans may also be inventors of patents.”

Thaler also argued that AI software must qualify as inventors because otherwise patentability would depend on “the manner in which the invention was made,” in contravention of 35 U.S.C. § 103. However, the CAFC stated that § 103 is not about inventorship. The cited provision of § 103 refers to how an invention is made, and does not outweigh the statutory provision addressing who may be an inventor.

The CAFC also referred to its own precedent stating that inventors must be natural persons and cannot be corporations or sovereigns. Univ. of Utah v. Max-Planck-Gesellschaft zur Forderung der Wissenschaften E.V., 734 F.3d 1315, 1323 (Fed. Cir. 2013); Beech Aircraft Corp. v. EDO Corp., 990 F.2d 1237, 1248 (Fed. Cir. 1993).

Thaler also raised some policy arguments stating that “inventions generated by AI should be patentable in order to encourage innovation and public disclosure.” However, the CAFC stated that this is speculative and lacks a basis in the text of the Patent Act and in the record, and anyway, the text in the statue is unambiguous.

The CAFC concluded that the Patent Act unambiguously and directly answers the question regarding whether AI can be an inventor and stated that “Congress has determined that only a natural person can be an inventor, so AI cannot be.”


According to Thaler, South Africa has granted patents with DABUS as an inventor. However, this will not be possible in the US unless the Supreme Court steps in (which does not seem likely) or Congress amends the Patent Act.


| May 21, 2020

In re Application of Application No. 16/524,350 (“Devices and Methods for Attracting Enhanced Attention”)

April 27, 2020

Robert W. Bahr (Deputy Commissioner for Patent Examination Policy)


The PTO denied a petition to vacate a Notice to File Missing Parts of Nonprovisional Application because an AI machine cannot be listed as an inventor based on the relevant patent statutes, case laws from the Federal Circuit, and the relevant sections in the MPEP.  The PTO did not find the petitioner’s policy arguments persuasive. 


            This application was filed on July 29, 2019.  Its Application data sheet (ADS) included a single inventor with the given name “DABUS[1]” and the family name “Invention generated by artificial intelligence.”  The ADS identified the Applicant as the Assignee “Stephen L. Thaler.”  Also, a substitute statement (in lieu of declaration) executed by Mr. Thaler was submitted, and an assignment document executed by Mr. Thaler on behalf of both DABUS and himself was submitted.  Finally, an “Inventorship Statement,” which stated that the invention was conceived by “DABUS” and it should be named as the inventor, was also submitted.

            Afterward, the PTO issued a first Notice to File Missing Parts on August 8, 2019, which indicated that the ADS “does not identify each inventor by his or her legal name,” and an surcharge of $80 is due for late submission of the inventor’s oath or declaration.

            Mr. Thaler filed a petition on August 29, 2019, requesting supervisory review of the first Notice. 

            The PTO issued a second Notice to File Missing Parts on December 13, 2019.  The PTO dismissed the petition filed on August 29, 2019 in a decision issued on December 17, 2019.

            Mr. Thaler filed a second petition on January 20, 2020, requesting reconsideration of the decision issued on December 17, 2019.

Relevant Statutes cited by the PTO

            35 U.S.C. §100(f):

The term “inventor” means the individual or, if a joint invention, the individuals collectively who invented or discovered the subject matter of the invention.

            35 U.S.C. §100(g):

The terms “joint inventor” and “coinventor” mean any 1 of the individuals who invented or discovered the subject matter of a joint invention.

            35 U.S.C. §101:

Whoever invents or discovers any new and useful process, machine, manufacture, or composition of matter, or any new and useful improvement thereof, may obtain a patent therefor, subject to the conditions and requirements of this title.

            35 U.S.C. §115(a):

An application for patent that is filed under section 111 (a) or commences the national stage under section 371 shall include, or be amended to include, the name of the inventor for any invention claimed in the application. Except as otherwise provided in this section, each individual who is the inventor or a joint inventor of a claimed invention in an application for patent shall execute an oath or declaration in connection with the application

            35 U.S.C. §115(b):

An oath or declaration under subsection (a) shall contain statements that … such individual believes himself or herself to be the original inventor or an original joint inventor of a claimed invention in the application.

            35 U.S.C. §115(h)(1):

Any person making a statement required under this section may withdraw, replace, or otherwise correct the statement at any time.

The PTO’s reasoning

            Citing the above statutes, the PTO found that the patent statutes preclude the petitioner’s broad interpretation that an “inventor” could be construed to cover machines.  That is, the PTO asserted that such broad interpretation could contradict the plain reading of the patent statutes.

            The PTO also cited the case law from the Federal Circuit to dismiss the petitioner’s argument.  For example, in Univ. of Utah v. Max-Planck-Gesellschajt zur Forderung der Wissenschajten e. V (734 F.3d 1315 (Fed. Cir. 2013), the CAFC held that a state could not be an inventor.  In Beech Aircraft Corp. v. EDO Corp. (990 F.2d 1237 (Fed. Cir. 1993), the CAFC held that “only natural persons can be ‘inventor.’”

            Furthermore, the PTO cited the relevant sections in the MPEP to support their position.  The PTO indicated that the MPEP defines “conception” as “the complete performance of the mental part of the inventive act” and it is “the formation in the mind of the inventor of a definite and permanent idea of the complete and operative invention as it is thereafter to be applied in practice.”  The PTO asserted that the use of terms such as “mental” and “mind” indicates that conception must be performed by a natural person.

            The PTO rejected the petitioner’s argument that the PTO should take into account the position adopted by the EPO and the UKIPO that DABUS created the invention, but DABUS cannot be named as the inventor.  The PTO indicated that the EPO and the UKIPO are interpreting and enforcing their own laws. 

            The PTO also rejected the petitioner’s argument that inventorship should not be a substantial condition for the grant of patents by arguing that “inventorship has long been a condition for patentability.”  The PTO rejected the notion that the granting of a patent for an invention that covers a machine does not mean that the patent statutes allow that machined to be listed as an inventor in another patent application.

            Finally, the petitioner provided some policy considerations to support his position: (1) this would incentivize innovation using AI systems, (2) would reduce the improper naming of persons as inventor who do not qualify as inventors, and (3) would inform the public of the actual inventors of an invention.  The PTO rejected the petitioner’s policy considerations by arguing that they do not overcome the plain language of the patent statutes. 


  • At this point, it appears that it is not possible to list an AI machine as an inventor in the U.S. patent applications.  The EPO reached a similar decision in December.  It is known that the Japanese Patent Act and the Korean Patent Act do not include an explicit definition of an inventor.  Also, the Chinese State Council called for “better IP protections to promote AI.”
  • Congress needs to work on this issue because the patent system is in place to incentive innovation in technology, and eventually, increase investment for more jobs.
  • A lack of patent protection for inventions developed by AI would decrease investment in the development and use of AI.
  • However, there is a concern, among other things, that the PTO may not be able to deal with situations where AI created enormous amount of prior arts to be reviewed by the Examiners.
  • Human programmer of AI or the one who defined the task of AI machine could be listed as the named inventor. 

[1] DABUS stands for “Device for Autonomous Bootstrapping of Unified Sentience.”  Mr. Thaler asserts that DABUS is a creativity machine programmed as a series of neural networks that have been trained with general information in the field of endeavor to independently create invention.  In addition, Mr. Thaler asserts that this machine was “not created to solve any particular problem and not trained on any special data relevant to the instant invention.”  Furthermore, Mr. Thaler asserts that this machine recognized “the novelty and salience of the instant invention.”

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