Written by: Brett J. Rosen
On April 27, 2020, the U.S. Patent and Trademark Office (PTO) announced that it denied an Applicant’s request to recognize an Artificial Intelligence (AI) computer program named “DABUS – Invention Generated by Artificial Intelligence” as an inventor on a pending U.S. patent application. A copy of the decision can be found here. By way of background, the application data sheet and the substitute statement filed along with that patent application (Application No. 16/524,350) identified “DABUS” as the sole inventor, and an assignment document assigned the entire right, title and interest of DABUS to Mr. Stephen Thaler. According to Thaler “it was the machine, not a person, which recognized the novelty and salience of the instant invention.”
In denying the request, the PTO stated that “current statutes, case law, and USPTO regulations and rules limit inventorship to natural persons.” For example, the PTO noted that “35 U.S.C. § 101 states “Whoever invents or discovers any new and useful process, machine, manufacture, or composition of matter. .. may obtain a patent therefore, subject to the conditions and requirements of this title” (emphasis added). “Whoever” suggests a natural person.” The PTO also cited Federal Circuit cases holding that neither states nor corporations could be named as inventors. Lastly, the PTO noted that the patent statutes and Federal Circuit case law concerning inventorship explain that the threshold question for inventorship is “conception,” and conception has been defined as “the complete performance of the mental part of the inventive act” and “the formation in the mind of the inventor of a definite and permanent idea of the complete and operative invention as it is thereafter to be applied in practice.” The PTO noted that the use of terms such as “mental” and “mind” indicated that conception must be performed by a natural person.
Thaler filed this (and other) patent applications naming DABUS as an inventor in the U.S. PTO, European Patent Office and the U.K. Intellectual Property Office (IPO). To date, all three patent offices have now rejected Thaler’s request to identify an AI computer program as an inventor.