Stephen Thaler v. Katherine K. Vidal, Under Secretary of Commerce for Intellectual Property and Director, United States Patent and Trademark Office, et al.

“The primary meaning of the word ‘invention’ in the Patent Act unquestionably refers to the inventor’s conception.” Pfaff v. Wells Elecs., Inc., 525 U.S. 55, 60 (1998). Here, it is undisputed that an artificial intelligence (AI) system known as DABUS used generalized background knowledge of a technical field to conceive of two novel inventions and then recognize their utility, all without specific guidance from a human being. Thus, only DABUS fits the statutory definition of “inventor” under the Patent Act: the “individual … who invented or discovered the subject matter of the invention.” Nevertheless, the U.S. Patent and Trademark Office rejected patent applications on both inventions solely because the inventor listed in the applications was an AI system rather than a human being. The Federal Circuit, like the district court below it, upheld that rejection on the same basis. As both parties agree, this holding—which overlooks that “individual” may simply refer to a single entity as opposed to a collective such as a corporation or government— completely denies patent protection to any and all inventions created by an AI system without a human inventor. The question presented is: Does the Patent Act categorically restrict the statutory term “inventor” to human beings alone?