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USPTO Says AI Machine Cannot Qualify as an Inventor

The United States Patent and Trademark Office (USPTO) recently published a decision on petition stating that an inventor must be a natural person, and denied Petitioner’s request to name an artificial intelligence entity as the inventor.

The inventor at issue is an artificial intelligence (AI) system named “Device for the Autonomous Bootstrapping of Unified Sentience” (DABUS).  DABUS was created by Dr. Stephen Thaler, and is described as a “Creativity Machine” that contains two artificial neural networks.  The first network is trained with general information from various knowledge domains and generates novel ideas.  The second network acts as a “critic,” monitoring the first network for new ideas and identifying ideas that are sufficiently novel.  The critic net also generates an affective response used to form and ripen ideas that have the most novelty, utility, or value.

DABUS was named as the inventor in an application data sheet (ADS) filed July 29, 2019, for U.S. Patent Application No. 16/524,350.  The applicant asserted “it was the machine, not a person, which recognized the novelty and salience of the instant invention.”

In response, the Patent Office issued a Notice to File Missing Parts of Nonprovisional Application on August 8, 2019, noting that the ADS does not identify each inventor by his or her legal name.  The applicant filed a petition requesting supervisory review, which was dismissed, and the applicant subsequently filed a request for reconsideration of the decision denying to vacate the notice to file missing parts.

The decision on petition, written by Robert Bahr, Deputy Commissioner for Patent Examination Policy, notes that the patent statutes preclude construing “inventor” to cover machines because Title 35 of the United States Code consistently refers to inventors at natural persons.  See, e.g., 35 U.S.C. § 101 (“Whoever inventors or discovers any new and useful process, machine, manufacture, or composition of matter . . . may obtain a patent therefore, subject to the conditions and requirements of this title”); 35 U.S.C. § 115 (refers to individuals and uses pronouns specific to natural persons –“himself” and “herself”—when referring to the “individual” who believes himself or herself to be the original inventor or joint inventor).  The decision also highlights decisions from the Federal Circuit, which hold that the patent laws require an inventor to be a natural person.  See Univ. of Utah v. Max-Planck-Gesellschaft zur Foderung der Wissenschaften e.V., 734 F.3d 1315 (Fed. Cir. 2013) (holding a state could not be an inventor); Beech Aircraft Corp. v. EDO Corp., 990 F.2d 1237, 1248 (Fed. Cir. 1993) (“only natural persons can be ‘inventors,’” and finding corporations cannot be inventors).  The decision further notes that Title 37 of the Code of Federal Regulations contains numerous references to the inventor as a “person,” and that the Manual of Patent Examining Procedure (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 decision explains that the use of terms such as “mental” and “mind” in the MPEP indicates that conception must be performed by a natural person.  (The European Patent Office and UK Intellectual Property Office have similarly refused the respective counterpart DABUS patent applications for naming a non-human inventor.)

Notably, the decision leaves open the possibility of naming a human inventor, explaining that the “USPTO has not made any determination concerning who or what actually created the invention claimed” in the application.  In fact, there are a number of ways a natural person can contribute to the conception of an AI invention, such as: developing techniques for obtaining and formatting training data, selecting the AI system for a task, obtaining inputs, utilizing the outputs of the AI system, designing the algorithm used by the AI engine, or applying new training data obtained in an inventive manner to an AI engine.

Stay tuned for future updates from the USPTO, as the USPTO has actively been studying and seeking public guidance in the area of AI inventions.