It Talks Like an Inventor but Does Not “Think” Like an Inventor
An ‘inventor’ is an individual who invents or discovers the subject matter of an invention as captured in the claims of a patent application. Traditionally, there was never any question that an inventor always had to be a natural person (i.e., a human being). More recently, however, there has been a push to try to get patent offices worldwide to recognize artificial intelligence (“AI”) system outcomes as inventors. Unsurprisingly, this has led to much debate regarding the definition of an ‘inventor’ and whether an AI system could be a listed inventor on a patent application.
Thanks to the Artificial Inventor Project and Stephen Thaler, both the United States Patent Office (USPTO) and the European Patent Office (EPO) recently provided guidance on whether an AI system may be an inventor. Thaler created an AI system called DABUS which, based on general data, created designs for a flashing warning light and a food container. Thaler filed patent applications for these inventions listing the AI system DABUS as the sole inventor.
In a recent Decision, the USPTO opined that inventors must be natural persons. Thus, an AI system cannot be an inventor. The Decision reasoned that interpreting ‘inventor’ to include non-humans would contradict the plain reading of the text of the patent statutes and the operational regulations of the USPTO, which consistently use terms like persons, individuals, mental, and mind in relation to inventorship. The Decision further states that conception is the touchstone of inventorship and has been described as “formation in the mind of the inventor” and a “mental act” in various Federal Circuit decisions. As such, the Decision determined that DABUS could not be the inventor.
While the EPO acknowledged that DABUS created the inventions when considering this issue, it reached a similar conclusion – the inventor must be a human being. The corresponding European patent applications were therefore refused by the EPO since the applications did not comply with the EPC requirement that the application designate a human inventor.