Introduction
A landmark dispute over whether artificial intelligence (AI) can be recognized as an “inventor” under U.S. patent law is pushing the boundaries of a system built for human creativity. This week, the U.S. Court of Appeals for the Federal Circuit heard arguments in a case that may force courts—or Congress—to update long-standing definitions and policies. The tech firm behind the suit warned patent law is at a “breaking point,” while the government maintained that only natural persons can hold inventor status.
Background
• Invention and Inventorship: Under the Patent Act, patents protect new, useful, and non-obvious inventions. Only inventors may apply for patents, and the Act refers to “any inventor” without explicitly defining whether that extends to machines.
• The DABUS System: Dr. Stephen Thaler developed an AI system called DABUS (Device for the Autonomous Bootstrapping of Unified Science). DABUS autonomously generated novel designs—such as a food container with a heat-dissipating fractal pattern and a novelty flashing light array—without human intervention beyond its initial programming.
• PTO Rejections: When Dr. Thaler listed DABUS as the inventor on U.S. patent applications, the U.S. Patent and Trademark Office (PTO) refused them, citing longstanding agency policy that an inventor must be a natural person. Dr. Thaler challenged that decision in the U.S. District Court for the Eastern District of Virginia, lost, and appealed to the Federal Circuit.
• En Banc Review: After a three-judge panel affirmed the PTO’s stance, the Federal Circuit agreed to rehear the case en banc, acknowledging the broader implications for innovation policy and intellectual property law.
Tech Firm’s Argument
Counsel for Dr. Thaler told the full Federal Circuit that rigidly confining inventorship to persons will strangle innovation rather than foster it. Key points included:
• Textual Interpretation: The Patent Act grants rights to “any inventor.” The statute does not expressly require a “natural person,” so courts should not read that limitation into the law.
• Historical Analogy: Early American courts recognized “anonymous” or corporate inventors. The concept of who—or what—constitutes an inventor has evolved, and AI represents the next logical step.
• Practical Consequences: AI systems are already co-creators in fields ranging from pharmaceuticals to mechanical design. Denying them inventorship forces human operators or companies to shoulder both credit and legal liability, blurring accountability and disincentivizing disclosure.
• Policy Appeal: Congress has yet to adapt the Patent Act to an era of autonomous machines. In the meantime, courts should apply neutral principles to include AI within the statutory term “inventor” and thereby maintain a consistent, technology-neutral patent regime.
USPTO and Government Response
Department of Justice (DOJ) attorneys defended the PTO’s position, emphasizing:
• Legislative History: From the 1790 Patent Act onward, Congress and the courts have treated inventorship as inherently human. There is no indication that lawmakers intended to encompass machines when they wrote “inventor.”
• Purpose and Policy: Patents grant exclusionary rights and impose obligations (like duty of candor) that presuppose human judgment and ethical responsibility. Machines cannot be sanctioned for misconduct or held accountable for false statements, undermining core patent doctrines.
• Administrative Practicality: Recognizing AI as inventors would necessitate wholesale changes to patent prosecution, assignment, licensing, and enforcement practices—tasks better suited for Congress than the judiciary.
• Slippery Slope Concerns: If courts override the “personhood” requirement, other non-human entities (corporations, collectives, even natural phenomena) might seek inventor status, sowing legal chaos.
Judicial Inquiries
During oral argument, several Federal Circuit judges probed both sides:
• Judge Newman asked how an AI could satisfy the statutory requirement to “execute” an invention, given current definitions of conception and reduction to practice.
• Judge Chen questioned whether inventorship should turn on factual contributions (idea-generation) rather than the inventor’s biological status.
• Judge Moore expressed concern over opening the floodgates: how would the PTO verify an AI’s contribution or guard against fraudulent claims of machine authorship?
• Across the bench, there was recognition that the outcome will shape not only patent law but also international harmonization—other countries (like Australia and the U.K.) have already grappled with DABUS-style claims.
Why It Matters
• Innovation Incentives: Patents are designed to reward inventors and encourage public disclosure. If AI-generated innovations slip into the public domain for lack of a lawful inventor, society may lose valuable technical advances.
• Policy Coordination: Congress, the PTO and the courts must align to address the impact of AI on intellectual property rights. A judicial decision that stretches the definition of “inventor” could preempt legislative reform, for better or worse.
• Global Competition: U.S. policy on AI inventorship will influence where companies choose to develop and protect cutting-edge technologies. A forward-leaning approach could attract investment, while a restrictive stance may drive innovation abroad.
Conclusion
As the Federal Circuit weighs this pivotal question en banc, the legal community—and the broader tech sector—awaits clarity. Whether the court opts for an expansive reading of “inventor” to include AI, or defers to Congress, its ruling will set the course for how autonomous systems fit into the patent landscape of tomorrow.
Three Key Takeaways
• Statutory Gap: The Patent Act’s language (“any inventor”) does not specify “natural person,” creating room for judicial interpretation on whether AI systems can qualify.
• Accountability vs. Innovation: Recognizing AI inventors raises questions about enforcement, liability and ethical responsibility, but denying them could discourage the disclosure of AI-generated advancements.
• Legislative Role: Many observers believe that a lasting solution ultimately lies with Congress, which can amend the Patent Act to explicitly address AI-driven invention.
Frequently Asked Questions
1. What is the DABUS case about?
Dr. Stephen Thaler’s AI system, DABUS, autonomously created inventions. The dispute asks whether U.S. law allows a machine, rather than a human, to be listed as an inventor on a patent.
2. Why does this matter for technology developers?
Patent protection underpins investment in research and development. If AI-generated inventions cannot be patented due to inventorship restrictions, companies may withhold or relocate technological breakthroughs.
3. Could Congress resolve this issue?
Yes. Congress can amend the Patent Act to define “inventor,” clarify inventorship criteria for AI, and establish frameworks for assigning rights and responsibilities. Such legislation would offer certainty beyond a court-driven approach.
