Should AI be an Inventor?
By Dominic A. Frisina
We live at a time when Artificial Intelligence (AI) autonomously drives cars, carries on conversations with humans, and in many other ways engages in seemingly intelligent and increasingly even creative acts previously performed only by humans. But, can an AI be an “inventor” within the meaning of U.S. patent law?
Stephen Thaler thought so. Mr. Thaler created an AI computer program named DABUS that he believes is a rather talented human-like inventor. He contends that DABUS is the inventor of a “light beacon that flashes in a new and inventive manner to attract attention” and a “beverage container based on fractal geometry”, and filed two U.S. patent applications naming the AI as the sole inventor. Since DABUS is unable to sign the papers necessary for establishing inventorship etc., the applications included Substitute Statements in Lieu of Declaration where Thaler explained that DABUS could not sign because it is “under legal incapacity… with no legal personality or capability to execute” papers. Thaler even filed a document that purports to transfer ownership of the inventions from the computer program to Thaler. Thaler signed on behalf of DABUS.
The United States Patent and Trademark Office (USPTO) refused to process the applications, sending Mr. Thaler a request to properly name the inventor. Insisting that DABUS is the proper inventor, Thaler petitioned the Director of the USPTO to vacate the Office’s requirement to properly name an inventor. The Director was unpersuaded. Dismissing the petition, the Director explained that the patent statute’s definition of “inventor” describes inventors as individuals. The Director further pointed to two decisions from the Court of Appeals for the Federal Circuit holding that inventors cannot even be juristic persons; they must be natural persons because only natural persons can perform the “mental act” of conception that is the “touchstone of inventorship”.
Conception is the touchstone of inventorship, the completion of the mental part of invention. It is the formation in the mind of the inventor, of a definite and permanent idea of the complete and operative invention, as it is hereafter to be applied in practice. Conception is complete only when the idea is so clearly defined in the inventor’s mind that only ordinary skill would be necessary to reduce the invention to practice, without extensive research or experimentation. [Conception] is a mental act…
Finding the Director’s decision unsatisfactory, Thaler sued the USPTO and the Director in the Eastern District of Virginia. The court found for the USPTO on motion for summary judgment, resolving the meaning of “inventor” as a matter of statutory construction for which there is ample evidence undeniably establishing that the definition of “inventor” is restricted to natural persons.
Thaler’s arguments in the district court largely mirror the foregoing summary; however, he added policy arguments. Among them, Thaler contended that the patent laws bearing on inventorship were passed before AI-generated inventions were a reality. In Thaler’s view if “Congress had contemplated this artificial intelligence issue, it would have included artificial intelligence machines within the definition of inventors.” Though factually incorrect, Thaler provides a segue to a more interesting issue. In October 2020, the USPTO issued a report on a request for public comment regarding AI inventions:
The majority of public commenters, while not offering definitions of [artificial intelligence (“AI”)], agreed that the current state of the art is limited to “narrow” AI. Narrow AI systems are those that perform individual tasks in well-defined domains (e.g., image recognition, translation, etc.). The majority viewed the concept of artificial general intelligence (AGI)—intelligence akin to that possessed by humankind and beyond—as merely a theoretical possibility that could arise in a distant future.
Based on the majority view that AGI has not yet arrived, the majority of comments suggested that current AI could neither invent nor author without human intervention. The comments suggested that human beings remain integral to the operation of AI, and this is an important consideration in evaluating whether IP law needs modification in view of the current state of AI technology.
In short, despite the amazing accomplishments in the field of artificial intelligence, as it stands today, AI is far from human-like. Perhaps, if AGI is ever achieved we will have this discussion again. But even then, the issue will be whether to change the patent statute’s definition of inventor to include AI, and not whether the current definition already includes it.
Mr. Frisina is a partner in the intellectual property practice at Buckingham Doolittle & Burroughs LLC. Attorney Frisina is a specialist in patent and trademark law, having prosecuted hundreds of chemical, electrical, and mechanical cases. His practice encompasses preparation and prosecution, licensing, and litigation matters.
 10 Powerful Examples Of Artificial Intelligence In Use Today, https://www.forbes.com/sites/robertadams/2017/01/10/10-powerful-examples-of-artificial-intelligence-in-use-today/?sh=2f0dd6d4420d (last accessed September 10, 2021); 28 Examples of Artificial Intelligence Shaking Up Business as Usual, https://builtin.com/artificial-intelligence/examples-ai-in-industry (last accessed September 10, 2021).
 35 U.S.C. § 100(f).
 Thaler v. Hirshfeld, 2021 WL 3934803 at 1 (E.D. Va. 2021); U.S. Patent Application Nos. 16/524,350 and 16/524,532.
 Thaler, 2021 WL 3934803 at 2.
Thaler, 2021 WL 3934803 at 2.
 Thaler, 2021 WL 3934803 at 2 (referring to 35 U.S.C. 100(f)(“The term ‘inventor’ means the individual… who invented or discovered the subject matter of the invention.”)).
Univ. of Utah v. Max-Planck-Gesellschaft, 734 F.3d 1315, 1323 (Fed. Cir. 2013); Beech Aircraft Corp. v. EDO Corp., 990 F.2d 1237, 1248 (Fed. Cir. 1993).
 University of Utah, 734 F.3d at 1323 quoting Burroughs Wellcome Co. v. Barr Labs., Inc., 40 F.3d 1223, 1227–28 (Fed.Cir.1994).
 Thaler, 2021 WL 3934803 at 8.
 Thaler, 2021 WL 3934803 at 8.
 See Pub. L. 112-29, § 3(a), 125 Stat. 285 (Sept. 16, 2011).
 Public Views on Artificial Intelligence and Patent Policy, p. ii, https://www.uspto.gov/sites/default/files/documents/USPTO_AI-Report_2020-10-07.pdf (last accessed September 10, 2021)).