conception : CAFC Alert


| 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.”

A Federal Circuit Reminder of the Continued Importance of Laboratory Notebooks and Other Corroborative Evidence of Inventorship

| April 22, 2016

Meng v. Chu

April 5, 2016

Before: Prost, Dyk and Wallach.  Opinion by Prost


In 1987, a research group at the High Pressure Low Temperature (“HPLT”) lab at the University of Houston lead by Ching-Wu Chu, a professor and the lab’s lead investigator, developed inventions related to superconducting compounds having transition temperatures higher than the boiling point of liquid nitrogen.  The University of Houston filed two applications listing Chu as the sole inventor.  The inventions were assigned to the University of Houston and licensed to Dupont.  The University of Houston and Ching-Wu evenly shared the license proceeds received from Dupont, and Chu gave $274,000 from his share to Pei-Herng Hor, a grad student at the lab, and Ruling Meng, an independent scientist at the lab.  After issuance of patents for the inventions, in 2008 Hor filed a law suit in the District Court for the Southern District of Texas seeking to be added as a co-inventor and in 2010 Meng intervened seeking to also be added as a co-inventor.  The District Court denied both Hor’s and Meng’s claims on the bases that they had failed to meet the “heavy burden” of proving co-inventorship by clear and convincing evidence despite Hor and Meng having received proceeds under the license, having been the first and second listed authors on a publication related to the inventions, and having been commended by Chu in a letter of recommendation for Hor for his discoveries related to the inventions.  The Federal Circuit affirmed.

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Under pre-AIA law, conception of a DNA segment is established by possession and appreciation, not completely accurate sequence knowledge

| November 20, 2013

Sanofi-Aventis v Pfizer, Inc.

November 5, 2013

Before Newman (Circuit Judge), Lourie (Circuit Judge) and Davis (District Judge). Opinion by Newman.


A patent is awarded to the first party to conceive and reduce to practice the invention.  When the invention is directed towards a DNA segment, conception requires possession and appreciation of the DNA segment that is claimed.  A completely correct sequence of the DNA segment is not the standard for establishing conception and reduction to practice.

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