Thaler v. Vidal, No. 2021-2347 (Fed. Cir. (E.D. Va.) Aug. 5, 2022). Opinion by Stark, joined by Moore and Taranto.
Stephen Thaler develops and runs artificial intelligence (AI) systems that he believes generate patentable inventions. One such system is his “Device for the Autonomous Bootstrapping of Unified Science” (DABUS). Thaler sought patents for two inventions by DABUS, and he named DABUS as the sole inventor for both.
The PTO determined that DABUS was not a valid inventor and that, accordingly, the patent applications were incomplete. Thaler then pursued judicial review of the PTO’s decisions. The district court concluded that an “inventor” under the Patent Act must be an “individual” and that the plain meaning of “individual” as used in the statute is a natural person. Thaler appealed.
The Federal Circuit affirmed, agreeing with the district court that an AI software system cannot be an “inventor” under the Patent Act. The Federal Circuit considered the statutory text in the Patent Act and ruled that, “here, there is no ambiguity: the Patent Act requires that inventors must be natural persons; that is, human beings.” The Federal Circuit explained that “the Patent Act expressly provides that inventors are ‘individuals.’” Although the term “individual” is not defined, the Supreme Court has explained that “when used as a noun, ‘individual’ ordinarily means a human being, a person.”
The Federal Circuit also determined that dictionaries as well as its own precedent supported the conclusion, and “nothing in the Patent Act indicates Congress intended to deviate from the default meaning.”