Takeaway: The USPTO has determined that inventorship is limited to natural persons, thereby precluding AI inventorship.

The U.S. Patent and Trademark Office (USPTO) has issued a decision that artificial intelligence systems cannot be deemed as inventors in a patent. This decision was in response to the listing of an AI system – DABUS – as an inventor in U.S. Application No. 16/524,350. While the application file is not yet public, the decision was issued in accordance with the USPTO Director’s authority to publish decisions that involve an interpretation of patent laws or regulations that would be of precedential value.

The ’350 application was originally filed by Stephen Thaler as the applicant and assignee, listing DABUS as the sole inventor. In response to the application filing, the USPTO issued a Notice to File Missing Parts of Nonprovisional Application indicating that the Application Data Sheet (ADS) did “not identify each inventor by his or her legal name.” The USPTO’s decision responds to petitions filed by the applicant requesting reconsideration and voiding of the Notice.

The applicant had explained that DABUS was programmed as a series of neural networks not created to solve a particular problem, and that DABUS had “recognized the novelty and salience of the instant invention.” The applicant contended that inventorship should not be limited to natural persons. The USPTO disagreed, noting that patent statutes preclude such a broad interpretation of “inventor.” Referencing various provisions, the USPTO noted that U.S. patent law repeatedly refers to inventors using terms such as “whoever,” “himself,” and “herself” to refer to inventors as natural persons. The USPTO further noted that the Federal Circuit has repeatedly held that inventors are individuals that conceive of the invention, and that there is no precedent where the claimed inventor is a thinking non-human machine.

This decision provides further guidance for U.S. applicants seeking to patent inventions involving AI. Notably, the European Patent Office (EPO) made a similar determination in January 2020 after analyzing the legal framework of the European patent system, wherein the EPO refused two applications listing DABUS as an inventor. The USPTO has established an initiative to seek public input and other engagement on AI matters.