Contributions

Inventio Ex Machina: The Patentability of AI Generated Inventions

by Delon Lier1

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.

1. 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.…”).

25. Id.

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).