Last week, the U.S. Court of Appeals for the Federal Circuit issued a precedential decision in Thaler v. Vidal, No. 2021-2347 (Aug. 5, 2022), holding that an “inventor” under the Patent Act must be a natural person.
Thaler filed two patent applications at the U.S. Patent and Trademark Office (“PTO”) listing an artificial intelligence software system called DABUS as the sole inventor. Thaler submitted a statement on DABUS’s behalf to satisfy the inventor’s oath or declaration and he filed an assignment purporting to convey all of DABUS’s rights as an inventor to himself. The PTO determined the applications were incomplete as lacking a valid inventor, and Thaler petitioned to vacate that determination. The PTO denied Thaler’s petition and found that inventors must be natural persons. Thaler then sought judicial review in the Eastern District of Virginia under the Administrative Procedure Act. The district court granted summary judgment to the PTO. Thaler appealed.
The Federal Circuit affirmed. The sole issue on appeal was whether an AI software system could be an “inventor” under the Patent Act. The Court resolved that question as one of statutory interpretation with its analysis beginning and ending with the text in the Patent Act: “Here there is no ambiguity: the Patent Act requires that inventors must be natural persons; that is, human beings.” The Patent Act defines “inventor” as one more individuals and otherwise uses the personal pronouns “himself” or “herself” – and not “itself” – to refer to an individual. While “individual” is not defined in the Act, the Supreme Court has stated that term ordinarily means a human being. See Mohamad v. Palestinian Auth., 566 U.S. 449, 454 (2012). The Dictionary Act likewise treats individuals as distinct from the artificial entities (e.g., corporations, associations, firms, etc.) that are also included under the broader definition of “person.” Thus, nothing in the statutory text indicated that Congress intended to permit non-human inventors.