Thaler v. Vidal

Citation: Not availableDocket: 21-2347

Court: Court of Appeals for the Federal Circuit; August 5, 2022; Federal Appellate Court

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The case involves Stephen Thaler, who appealed a decision from the United States Patent and Trademark Office (PTO) regarding the eligibility of an artificial intelligence (AI) system, DABUS, as an inventor on patent applications. Thaler filed two patent applications in July 2019, listing DABUS as the sole inventor and asserting that he did not contribute to the conception of the inventions, which he claimed were generated autonomously by the AI. The PTO denied the applications, stating that the Patent Act defines an inventor as a natural person, thus not allowing for a machine to be considered an inventor. Thaler challenged this decision in the U.S. District Court for the Eastern District of Virginia, which upheld the PTO’s conclusion and granted summary judgment in favor of the PTO. The Federal Circuit Court affirmed the lower court's decision, agreeing that the statutory definition of 'inventor' is limited to human beings. Thaler had submitted several documents in support of his claims, including a sworn statement on DABUS' behalf and an assignment of rights, but the PTO deemed the applications incomplete due to the absence of a valid human inventor.

Thaler's request for reconsideration was denied by the PTO, which reiterated that only natural persons can be inventors on patent applications. Subsequently, Thaler sought judicial review of the PTO's decisions under the Administrative Procedure Act (APA). The parties agreed to have the District Court review the case based on the administrative record, leading to cross-motions for summary judgment. The District Court ruled in favor of the PTO, concluding that the term 'inventor' in the Patent Act refers exclusively to natural persons. Thaler appealed, and jurisdiction was established under 28 U.S.C. § 1295 for APA claims against the PTO.

The appellate review follows the Fourth Circuit's de novo standard for summary judgment. The court may overturn an administrative decision only if it is arbitrary, capricious, or exceeds statutory authority. The primary issue on appeal is whether an AI system can be classified as an 'inventor' under the Patent Act. The court found the statute unambiguous: it explicitly defines 'inventor' as a natural person. The Patent Act, post-2011, identifies inventors as 'individuals' and consistently refers to them as such throughout. Although 'individual' is not defined in the Act, the Supreme Court has clarified that it typically refers to a human being. This interpretation is supported by common usage and dictionary definitions, reinforcing that 'individual' denotes a single human being.

The Dictionary Act defines 'person' and 'whoever' to include various entities, such as corporations and partnerships, while distinguishing 'individual' as referring specifically to natural persons unless indicated otherwise. The Supreme Court has affirmed that 'individual' in statutes denotes human beings unless Congress specifies otherwise, and nothing in the Patent Act suggests a deviation from this interpretation. The Patent Act consistently uses personal pronouns like 'himself' and 'herself' in reference to 'individual,' implying that only human inventors are recognized. It mandates that inventors submit an oath or declaration, which is incompatible with the notion of AI systems as inventors. Thaler's arguments asserting that AI should be classified as inventors are unconvincing; references to 'whoever' in sections concerning patent eligibility and infringement do not pertain to inventorship. Section 103, which addresses nonobviousness, does not relate to the definition of who qualifies as an inventor. Finally, a contextual reading of the Patent Act, as a whole, reinforces that inventors must be human beings.

An 'inventor' must be a human being, as established by precedent including Univ. of Utah v. Max-Planck-Gesellschaft and Beech Aircraft Corp. v. EDO Corp., which confirm that only natural persons can be recognized as inventors under the Patent Act. The interpretation of the term 'inventor' is straightforward and does not permit corporations or sovereigns to qualify. The Court emphasizes that the unambiguous language of the statute resolves the issue without needing further statutory construction. 

Thaler’s arguments for patenting AI-generated inventions, aimed at fostering innovation, lack textual support in the Patent Act. The Court asserts that it cannot prioritize vague policy objectives over the explicit language chosen by Congress. The question of whether human-assisted AI inventions can be patented is not addressed in this case. 

Thaler's claim regarding the constitutional purpose of patents is countered by the assertion that Congress has the authority to define inventorship, and limiting it to humans is not unconstitutional. The Court finds Thaler's reference to foreign patent decisions irrelevant to the interpretation of the U.S. Patent Act. Ultimately, the Court affirms the district court's decision and assigns costs to the appellant.