Beyond Humans

The Legal Battle for AI Invented Patents

“To be human is to dance with joy and sorrow, in the fleeting melody of existence.”

On April 24, 2023 of this year, something potentially foundational and precedent-setting happened in the law involving AI. The U.S. Supreme Court declined to hear a case involving a software engineer who was denied a patent. The patent application he filed was not for something he invented. Already, we are off to a weird start.

Although not a patent lawyer (although I filed for one myself years ago with the assistance of a well-qualified patent lawyer) I struggle to see why a person or company or anyone would file a patent application in someone else’s name. But, then again, this applicant did not file the application in someone else’s name at all. Getting weirder. In fact, by the court’s conclusion, he did not file the application on behalf of any individual. “Individual” here is a key term of argument regarding the entire matter.

Software Engineer and Frankenstein…Fair Comparison?

In the novel Frankenstein, the scientist attempts to discover a way to bring people back to life. On the road to that goal things go sideways (technical term for getting completely screwed up) and a monster is created instead. The story of this patent case is not so much Frankenstein as it is Terminator.

John Connor: Listen to me very carefully, okay? You’re not a Terminator anymore, alright? You just can’t go around killing people.

The Terminator: Why?

John Connor: What do you mean, why? Because you can’t.

The Terminator: Why?

John Connor: Because you just can’t. Trust me on this.

Stephen Thaler is a scientist and inventor who has spent more than 20 years working in the aerospace industry. He has worked in a variety of fields, including radiation effects in solids, high-energy lasers, low-observable technology, and the development of rare materials like diamond in laser plasmas. He currently focuses the majority of his research on computational psychology utilizing artificial neural network paradigms that are patented.

Stephen Thaler received his Ph.D. in physics from the University of Missouri-Columbia for his work on radiation damage in silicon. That work employed early versions of artificial neural networks. After a stint working for a defense contractor, he ventured out to establish his own enterprise, securing patents primarily focused on the deliberate disruption of neural networks. Currently, he is President and CEO of Imagination Engines, Inc., a company focused on computational creativity, predominantly serving the Department of Defense.

Thaler’s involvement in what has become, for now, a rejected U.S. Supreme Court case began with his development of an artificial intelligence (AI) system known as DABUS (Device for the Autonomous Bootstrapping of Unified Sentence). Thaler’s patent application involved two inventions that he admits were created entirely by DABUS. One invention was a flashing beacon for calling attention in an emergency and the other was a food container built utilizing fractal design to facilitate quick reheating.

What’s In A Name?

Apparently, everything.

Thaler’s application filed in the name of DABUS was eventually rejected by the U.S. Patent Office (PTO). He then appealed that matter to a Federal District Court. He lost there again as well. Finally, he appealed to the United States Court of Appeals for the Federal Circuit. The Circuit Court summarized the question of the case as follows: “This case presents the question of who, or what, can be an inventor. Specifically, we are asked to decide if an artificial intelligence (AI) software system can be listed as the inventor on a patent application.”

The court noted that despite the case involving matters of software, AI, etc. it really came down to an interpretation of the wording of the relevant statute: “The United States Patent and Trademark Office (PTO)…concluded that the Patent Act defines ‘inventor’ as limited to natural persons; that is, human beings.”

Thaler listed DABUS as the sole inventor on both applications. He acknowledged in prior proceedings that he did not contribute to the conception of the inventions. Instead of entering the required last name of the inventor on the applications, Thaler entered “the invention [was] generated by artificial intelligence.” Then, to satisfy 35 U.S.C. § 115's requirement of submitting sworn statement when applying for a patent, he submitted a statement on DABUS' behalf. He also provided a supplemental “Statement on Inventorship” explaining that DABUS was “a particular type of connectionist artificial intelligence” he called a “Creativity Machine.” Then, he filed a document intended to assign himself all of DABUS' rights as the inventor.

The PTO reviewed the applications and concluded that both lacked the proper listing of an inventor. They sent Thaler a “Notice to File Missing Parts of Nonprovisional Application” requiring Thaler to identify valid inventors. Thaler petitioned the PTO director to remove the Notices citing his Statements of Inventorship. The PTO denied that request responding that “a machine does not qualify as an inventor.” The PTO rejected reconsideration explaining that inventors on a patent application must be natural persons.

His appeal to the District Court ended with this conclusion: The term “inventor” in the Patent Act must be an individual which, in turn, means a natural person.

This is the quote from the Appeals Court when reviewing the District Court’s grant of summary judgment in favor of the PTO.

The Patent Act expressly provides that inventors are “individuals.” Since 2011, with the passage of the Leahy- Smith America Invents Act, the Patent Act has defined an “inventor” as “the individual or, if a joint invention, the individuals collectively who invented or discovered the subject matter of the invention.” 35 U.S.C. § 100(f) (emphasis added). The Act similarly defines “joint inventor” and “coinventor” as “any 1 of the individuals who invented or discovered the subject matter of a joint invention.” § 100(g) (emphasis added). In describing the statements required of an inventor when applying for a patent, the statute consistently refers to inventors and co-inventors as “individuals.”

The court did note, interestingly, that the Patent Act does not define “individual” as it is used to refer to inventors. Shaler’s argument is that individual encompasses any unique entity, not just sentient humans. The Appeals Court then referred to other Supreme Court cases which have considered the term. It held that when used “[a]s a noun, ‘individual’ ordinarily means a human being, a person.” Mohamad v. Palestinian Auth., 566 U.S. 449, 454, 132 S.Ct. 1702, 182 L.Ed.2d 720 (2012). Then, reasonably, it noted that in common everyday language, that is the way even non-lawyers use the term individual. No one thinks “AI software algorithm” when using the word individual.

Thaler Argues Individual Includes AI Algorithm

Thaler highlighted the word “whoever” in 35 U.S.C. §§ 101 and 271. In one section it uses it this way: “[w]hoever invents or discovers any new and useful process, machine, manufacture, or composition of matter, or any new and useful improvement thereof, may obtain a patent therefor, subject to the conditions and requirements of this title.” The court rejected this attempt by pointing out that elsewhere in the statute it reads that patents must satisfy the “conditions and requirements of” Title 35 of the U.S. Code, including its definition of “inventor.” This section regulates what constitutes infringement, repeatedly using the word “whoever” including corporations and other non- human entities. But the court found that despite the fact that non-humans may infringe patents was not persuasive to the court when considering whether non-humans can file for patents.

Thaler noted that one other country, South Africa, had granted his patent filed in the same manner as the one at issue in this case. The court easily brushed that argument aside by noting that they are not interpreting the patent legislation of South Africa.

*The quote that began this piece, written by ChatGPT with a single prompt. Is AI human? Will it ever be?