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IP Alert: USPTO Says AI Can't Be Named an "Inventor" Under Current Law

April 29, 2020

On April 27, the USPTO published a petition decision explaining that only a natural person may be named as an inventor in a U.S. patent application. During prosecution of the application at issue, the application data sheet (ADS) had listed the only named inventor as an artificial intelligence “creativity machine” referred to as “DABUS,” which the applicant, Stephen Thaler, described as a programmed series of neural networks. However, the USPTO subsequently issued a notice to file missing parts explaining that the ADS had failed to properly identify an inventor. Thaler had filed an initial petition requesting that the notice to file missing parts be withdrawn, but the petition was denied. Thaler then filed a second petition requesting reconsideration to determine whether an artificial intelligence machine such as DABUS could qualify as a named inventor.

In its decision, the USPTO found that “U.S. patent law does not permit a machine to be named as the inventor in a patent application.” In reaching this conclusion, the decision examined various provisions of 35 U.S.C. that it found “consistently refer[red] to inventors as natural persons.” For example, section 101 states, “Whoever invents . . .” and section 115 specifically refers to individuals and uses the pronouns “himself” and “herself” when referring to inventors. Based on these passages, the USPTO reasoned that “interpreting ‘inventor’ broadly to encompass machines would contradict the plain reading of the patent statutes that refer to persons and individuals.” Additionally, the decision found further support in Federal Circuit case law concerning inventorship, including the Univ. of Utah v. Max-Planck Gesellschaft decision, which found that a state could not be named an inventor in a patent application.

This decision likewise comports with two recent European Patent Office (EPO) decisions also addressing whether DABUS could be named as an inventor. Similarly, the EPO found that the legal framework of the European patent system would only permit a natural person to qualify as the inventor designated in a European patent application—not a machine.

If you have questions regarding this decision, please contact Fitch Even attorney Evan Kline-Wedeen, author of this alert.

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