by Delon Lier*
Only human beings have been recognized as inventors under the Patent Act. This is largely because patents are only granted to inventors capable of “conception.” Until recently, it was an agreed upon fact that no non-human entities are been capable of performing the mental acts required of conception. However, advancements in artificial intelligence (“AI”) technology have cast serious doubt on this position. Thus, the question has arisen; can an artificial intelligence be recognized as the inventor of a patent? In this contribution, Delon Lier (‘21) considers whether the USPTO was correct in determining that the Patent Act and Federal Circuit precedent forecloses the possibility of AI entities being recognized as inventors. Ultimately, this contribution argues that while the USPTO was correct to reject inventorship under the text of the Patent Act, it was incorrect in determining that any future AI would fail the Federal Circuit’s legal standard of “conception.”
Until recently, asking whether a non-human entity could be recognized as the inventor of a patented invention would seem ridiculous. During the entire history of American patent system, only human beings have been recognized as inventors. However, due to advancements in artificial intelligence (“AI”) technology not only have AI systems been used to help develop patentable subject matter but also have been credited with sole inventorship. This tension caused by AI-generated inventions, was brought into sharp relief when Stephen L. Thaler applied for two patents naming “DABUS”, an AI, as the sole inventor of both inventions.2 In late 2019, both patent applications were denied by the European Patent Office (“EPO”)3 and the United Kingdom Intellectual Property Office (“UKPIO”).4 In April of 2020—after issuing a notice seeking public comment on the patentability of AI-generated inventions5—the United States Patent and Trademark Office (“USPTO”) similarly found Thaler’s applications invalid for naming an AI as the inventor.6 The USPTO based its decision on the text of the Patent Act and the Federal Circuit standard of “conception.”7 However, these legal arguments only scratch at the surface of potential legal and policy issues implicated by AI inventorship.8 Thus, although a court has yet to rule on this question, the relevant agency has already decided that AI cannot be recognized as inventors. This contribution will argue that the USPTO was correct in finding that only human beings can be named as inventors under the Patent Act, though, contrary to the agency’s second line of reasoning, it will also be argued that the current standard of conception can be inclusive of non-human entities.
Historically, the test for inventorship depended solely on the judicial standard of conception.9 It was only in response to the DABUS patents that a second criterion has seemingly been added by the USPTO. This second requirement—that the inventor be a human being—was always inherent to the Patent Act, but it had not been previously questioned or explicitly stated. Thus, following the DABUS application decisions, the current test for inventorship appears to be: 1) is the inventor an “individual” under the Patent Act, and 2) did the alleged inventor contribute to conception?
To determine who or what is an “inventor” under the Patent Act, one must look to the language of the statute. In 35 U.S.C.A. § 100, “inventor” is defined in the following manner: “[t]he term “inventor” means the individual or, if a joint invention, the individuals collectively who invented or discovered the subject matter of the invention.”10 The Act itself does not provide a definition for the term “individual,” however, the ordinary meaning of the term, definitions from the Dictionary Act, and the surrounding context of the Patent Act, show that the term “individual” should be construed to mean “human being.”
Because the Patent Act never explicitly defines the term “individual,” one must first turn to the ordinary meaning.11 When determining the ordinary meaning of the word “individual,” the Supreme Court in Mohamad v. Palestinian Authority found that, as a noun, “individual” ordinarily means “[a] human being, a person.”12 The Court arrived at this determination by appealing to several contemporary dictionaries which unmistakably defined “individuals” as a “person” or “human being.”13 In accordance with West Virginia University Hospitals v. Casey, the Court deferred to the ordinary meaning of term “individual” at the time that the statue was written and enacted.14 Applying this approach to the Patent Act, the term “individual” similarly means “natural person” or “human being.” Dictionaries in circulation at the time the text of § 100 was passed into law defined an individual as “a noun, this term denotes a single person as distinguished from a group or class, and also, very commonly, a private or natural person.”15 As shown here, the ordinary meaning of the word “individual” used in the Patent Act means “natural person.”
In addition to the plain text of the Patent Act, we may rely on the Dictionary Act to define the term “individual.”16 The Dictionary Act states, “the words ‘person’, ‘human being’, ‘child’, and ‘individual’, shall include every infant member of the species homo sapiens who is born alive at any stage of development.”17 This section of the Dictionary Act tells us that the term “individual” is synonymous with “human being” and signifies those who are of the “species homo sapiens.” In the aforementioned case of Mohamad, the Supreme Court used this section of the Dictionary Act to arrive at the conclusion that “individual” means “natural person” when used in a statute unless there is strong contextual support, such as clear congressional intent, to find otherwise.18 In the Patent Act, there is no contextual support to overcome the definition of the Dictionary Act. Thus, the term “individual” should only be interpreted to include “natural persons” or “human beings.”
It should be noted that “individuals” or “inventors” are never implied to be non-human entities within the text. Rather, there is abundant context in the statute pointing towards “individuals” being natural persons. For example, § 101 uses the term “whoever” and the term “person” is used in § 102 and § 115.19 Furthermore, § 115 states that an oath of inventorship can be taken when “…such individual believes himself or herself to be the original inventor.”20 The use of these gendered terms means that an “individual” who is an “inventor” is capable of being sexed. Congress could have easily used the word “themself” or “itself” yet they deliberately chose to retain the original gendered language, even after the 2011 AIA revision of the Patent Act.21 As AI-entities/programs exist outside of a sexual dichotomy, these gendered terms lend further support that the words “individual” and “inventor” refer to human beings. Thus, interpreting the terms “individuals” or “inventors” to include AI is ultimately inconsistent the Patent Act.
The arguments advanced in this contribution about the text of the Patent are similar to those found in the USPTO’s decision.22 In fact, most of the comments submitted during the notice and comment period concur with many of these arguments.23 However, when looking to the second question of inventorship—whether the inventor contributed to conception—it appears the USPTO is potentially mistaken. The USPTO claims that under current Federal Circuit precedent, AI entities cannot perform conception, though as explained below, this may not always be the case.
The Federal Circuit has long established that an individual must contribute to the conception of an invention to be recognized as the inventor.24 In other words, “conception is the touchstone of inventorship, the completion of the mental part of invention.”25 The Court has stated that an inventor has completed conception when “the inventor had an idea that was definite and permanent enough that one skilled in the art could understand the invention.”26 Furthermore, the Federal Circuit has clarified that for an idea to be considered “definite and permanent” the inventor must have a specific solution to a problem at hand and not just a general goal he or she hopes to pursue.27
When applying this standard of conception, the USPTO is correct in noting that it has never previously recognized a non-human entity. For example, in Beech Aircraft Corp. v. EDO Corp. the Court held that although a company had been assigned ownership of a patent, it could not be declared the inventor since “only natural persons can be ‘inventors.’”28 In New Idea Farm Equipment Corp. v. Sperry Corp., the Court similarly stated that “people conceive, not companies.”29 Furthermore, in MBO Laboratories v. Becton, the Court reaffirmed their position stating that “[i]ndividuals, not corporations, create inventions.”30 Seemingly consistent with these lines of case, the USPTO in their final decision on the DABUS patents cited to University of Utah v. Max-Planck-Gesellschaft to establish that only human beings can participate in conception.31 However, the reasoning of University of Utah v. Max-Planck-Gesellschaft can be read as not foreclosing the possibility that non-human entities capable of performing mental acts can perform conception.
In Max-Planck-Gesellschaft, the Federal Circuit was tasked, in part, with determining whether a state could be recognized as an inventor. The Court, as it had many times before, held that an inventor must contribute to the mental act of conception. To that end, the court remarked “to perform this mental act, inventors must be natural persons and cannot be corporations or sovereigns.”32 On its face, this statement seems to preclude anything except a natural person from inventorship. However, another way to read the Court’s reasoning is that sovereigns cannot be inventors, not because they are not natural persons, but because they are unable to perform mental acts. What it appears the Court articulated when it claimed that “in order to perform this mental act, inventors must be natural persons,” is that natural persons thus far have been the only entities to perform mental acts in conjunction with invention. Human beings in the Court’s eye are the only entities known to perform mental acts. Thus, how the Court would rule on the question of conception when presented with an AI that is able to perform mental acts is not foreclosed by this case. In the context of conception, the “mental act,” according the Federal Circuit, is the formation in the mind of the inventor of concrete and permanent ideas. According to Thaler, DABUS was able to perform each part of the act of conception.33 Although under the Patent Act DABUS is not an individual, it appears that it could pass the test for conception according to this reading of the reasoning of Max-Planck–Gesellschaft.
To lend more support to this interpretation of the Court’s reasoning in Max-Planck–Gesellschaft, the Federal Circuit has never used the term “brain” when discussing inventorship, rather it has consistently relied upon the term “mind.” Whereas idea formation in the “brain” of the inventor would certainly preclude AI whose processing do not occur in some organic structure, idea formation within a “mind” does not implicate such restrictions. The word “mind” is defined by Black’s Law Dictionary as “[t]he source of thought and intellect; the seat of mental faculties.”34 Here, there is no mention to an organic structure within a human being but rather simply the place where mental faculties lie. Furthermore, experts in the field of psychology and neurology have clearly articulated that a “brain” and a “mind” are two distinct concepts.35 AIs like DABUS and future AIs can in fact have “minds,” because they have centralized processing that may perform mental acts. Thus, it is not apparent that the Federal Circuit’s precedent wholly eliminates the possibility of AI passing the test of conception, as suggested by the USPTO.
Furthermore, in each of the cases where the Federal Circuit claimed that only natural persons were inventors, it was always in a situation where a natural person was the inventor and the other entity—a corporation or sovereign which had been assigned ownership—could not perform mental acts.36 Thus, although it appears that the Court in each of these cases focused on the “natural person” aspect of conception, it would be more correct to state that they focused on the only entity capable of performing mental acts. Through this understanding, the Federal Circuit’s discussion of conception in Max-Planck-Gesellschaft is consistent with its previous rationale and holdings. Thus, the Court’s focus on the ability to perform mental acts does not categorically restrict inventorship or conception to human beings.
Although AI inventors remain unrecognizable under the language of the Patent Act, their ability to pass the judicial standard of conception is still a noteworthy realization. As AI continue to be used in the development of inventions, whether Congress amends the language of the Patent Act to include AI entities is a real possibility. If such a step is taken, inventors and courts would still need to be able to establish whether or not the named AI is the inventor. Because the standard of conception focuses on mental acts and not personhood, the judicial standard could and should be used as the standard for inventorship for both humans and AI.
* Delon Lier is a J.D. Candidate (2021) at New York University School of Law. This piece is a commentary on issues raised by the 2020 Giles Rich Invitational Moot Court competition held by the American Intellectual Property Law Association (“AIPLA”). The problem presented a Federal Circuit fact pattern raising a number of issues, including whether an artificial intelligence (“AI”) can be named as the inventor on a patent application. The views expressed in this article do not necessarily represent the views of the author. Rather, this article is a distillation of the analysis the author represented at the Giles Rich Competition and updated to reflect several legal and policy shifts that have since occurred.
2. Device for the Autonomous Bootstrapping of Unified Sentience (“DABUS”) is a “creativity machine” invented by Stephen Thaler. DABUS was fed information and designed two original inventions. First, a fractal drink container that can alter its shape and second a flickering light that mimics brain activity known as a “neural flame” which could be used to better capture one’s attention during emergency situations. Thaler applied for both inventions to receive patent protection and listed DABUS as the sole inventor.
3. See Stephen Thaler, Eur. Pat. Office Grounds for Decision, App. No. 18275174.3, Eur. Pat. Reg., (Jan. 27, 2020), https://register.epo.org/application?documentId=E4B63OBI2076498&number=EP18275174&lng=en&npl=false; Stephen Thaler, Eur. Pat. Office Grounds for Decision, App. No. 18275163.6, Eur. Pat. Reg., (Jan. 27, 2020), https://register.epo.org/application?documentId=E4B63SD62191498&number=EP18275163&lng=en&npl=false.
4. See Stephen Thaler, UK. Intellectual Prop. Off. Decision, BL O/741/19 (Dec. 4, 2019), https://www.ipo.gov.uk/p-challenge-decision-results/o74119.pdf.
5. See Request for Comments on Patenting Artificial Intelligence Inventions, 84 Fed. Reg. 166 (Aug. 27, 2019), https://www.federalregister.gov/documents/2019/08/27/2019-18443/request-for-comments-on-patenting-artificial-intelligence-inventions#citation-1-p44889.
6. Stephen Thaler, USPTO, Decision on Petition, App. No. 16/524,350 (Apr. 22, 2020), https://www.uspto.gov/sites/default/files/documents/16524350_22apr2020.pdf?utm_campaign=subscriptioncenter&utm_content=&utm_medium=email&utm_name=&utm_source=govdelivery&utm_term=.
7. See id.
8. In addition to questions about the text of the patent act and the judicial standard of Conception, many other potential issues have been triggered by AI inventorship. These questions include the constitutionality of granting patents to non-human entities; whether inventorship creates property rights for AI; and who are AI PHOSITAs. These are only a few of the potential issues that would need to be considered before either a court or Congress recognizes AI inventorship. For the purposes of this comment, however, only issues of conception and the textual interpretation of the Patent Act are considered.
9. Burroughs Wellcome Co. v. Barr Labs., Inc., 40 F.3d 1223, 1227–28 (Fed. Cir. 1994) (finding that conception is the cornerstone of invention).
10. 35 U.S.C.A. § 100(f) (emphasis added).
11. See FCC v. AT&T Inc., 562 U.S. 392, 403 (2011) (reaffirming that when a statute does not define a term, one should use its ordinary meaning).
12. Mohamad v. Palestinian Auth., 566 U.S. 449, 454 (2012).
13. See id.; see also, Individual, Oxford English Dictionary (2d ed. 1989); Individual, Random House Dictionary of the English Language (2d ed. 1987); Individual, Webster’s Third New International Dictionary (1986).
14. W. Va. Univ. Hosps. v. Casey, 499 U.S. 83, 97 (1991).
15. Individual, Black’s Law Dictionary (4th ed. 1951).
16. See Burwell v. Hobby Lobby Stores, Inc., 573 U.S. 682, 707–08 (2014) (finding that a court must turn to the Dictionary Act to determine the meaning of any Act of Congress, unless the context indicates otherwise).
17. See 1 U.S.C.A. § 8 (emphasis added).
18. See Mohamad, 566 U.S. 449, 455 (2012).
19. See 35 U.S.C.A. § 101, § 102, § 115.
20. See id. at § 115 (emphasis added).
21. The Leahy–Smith America Invents Act (AIA) was a 2011 Act passed by congress which revised many sections of the 1952 Patent Act.
22. See Request for Comments on Patenting Artificial Intelligence Inventions, 84 Fed. Reg. 166 (Aug. 27, 2019), https://www.federalregister.gov/documents/2019/08/27/2019-18443/request-for-comments-on-patenting-artificial-intelligence-inventions#citation-1-p44889.
23. See generally U.S. Pat. and Trademark Off., Public Views on Artificial Intelligence and Intellectual Property Policy (2020), https://www.uspto.gov/sites/default/files/documents/USPTO_AI-Report_2020-10-07.pdf (reiterating the comments submitted to the USPTO which nearly universally rejected non-human inventorship due to the language of the Patent Act).
24. See Board of Educ. v. Am. Bioscience, Inc., 333 F.3d 1330, 1337 (Fed. Cir. 2003) (holding that conception is the touchstone of inventorship, and that each inventor must contribute to conception). See also MPEP § 2137.01 (9th ed. Rev. 8, Jan. 2018) (“Unless a person contributes to the conception of the invention, he is not an inventor. . . .”).
26. Burroughs Wellcome Co. v. Barr Labs., Inc., 40 F.3d 1223, 1228 (Fed. Cir. 1994).
27. See id.
28. Beech Aircraft Corp. v. EDO Corp., 990 F.2d 1237, 1248 (Fed. Cir. 1993).
29. New Idea Farm Equip. Corp. v. Sperry Corp., 916 F.2d 1561, 1566 (Fed. Cir. 1990).
30. MBO Laboratories, Inc. v. Becton, Dickinson & Co., 602 F.3d 1306, 1310 n.1 (Fed. Cir. 2010).
31. See Request for Comments on Patenting Artificial Intelligence Inventions, 84 Fed. Reg. 166 (Aug. 27, 2019), https://www.federalregister.gov/documents/2019/08/27/2019-18443/request-for-comments-on-patenting-artificial-intelligence-inventions#citation-1-p44889.
32. Univ. of Utah v. Max-Planck-Gesellschaft Zur Forderung Der Wissenschaften E.V., 734 F.3d 1315, 1323 (Fed. Cir. 2013).
33. See Request for Comments on Patenting Artificial Intelligence Inventions, 84 Fed. Reg. 166 (Aug. 27, 2019), https://www.federalregister.gov/documents/2019/08/27/2019-18443/request-for-comments-on-patenting-artificial-intelligence-inventions#citation-1-p44889.
34. Mind, Black’s Law Dictionary (11th ed. 2019).
35. See Ashley Ford, Being Human: An Interview With Daniel J. Siegel, MD, Psychiatric Times, (Sept. 14, 2017), https://www.psychiatrictimes.com/view/being-human-interview-daniel-j-siegel-md.
36. See Board of Educ. v. Am. Bioscience, Inc., 333 F.3d 1330, 1337; Beech Aircraft Corp. v. EDO Corp., 990 F.2d 1237, 1248 (Fed. Cir. 1993); New Idea Farm Equip. Corp. v. Sperry Corp., 916 F.2d 1561, 1566 (Fed. Cir. 1990); MBO Laboratories, Inc. v. Becton, Dickinson & Co., 602 F.3d 1306, 1310 n.1 (Fed. Cir. 2010).