Eventually, it was bound to happen. A patent application was filed by a machine. Well, not exactly. A human being filed a patent application naming a machine as the inventor.
The machine was an artificial intelligence machine described as a “creativity machine.” Its name was listed as “DABUS Invention Generated by Artificial Intelligence.” The invention was called “Devices and Methods for Attracting Enhanced Attention.”
The human’s name was Stephen L. Thaler. Mr. Thaler filed U.S. patent application no. 16/524,350 in the PTO on July 29, 2019. He also filed a statement acknowledging that because existing law does not allow a machine to own property, he was the assignee of DABUS’s invention. He said that he was the legal representative of DABUS, and was the applicant for the patent application. Mr. Thaler did not file the required oath or declaration, which is the inventor’s statement, signed under oath, that they believe they are the original inventor of the invention.
After the application was filed, the PTO sent the applicant a notice requiring that the missing oath or declaration be submitted. The applicant responded with a petition seeking to vacate the notice, which was denied. The applicant filed a petition requesting reconsideration.
In his petition, the applicant argued that inventorship should not be limited to natural persons. He said that DABUS was “programmed as a series of neural networks that have been trained with general informant in the field of endeavor to independently create the invention.” He further explained that DABUS was not created to solve a specific problem and was not trained on data relevant to the invention, but was able to “recognize” that the invention was novel.
In an unsurprising decision, the PTO denied the petition. The PTO relied on the patent statutes, which provide that “whoever invents or discovers any new and useful process, machine, manufacture, or composition of matter… may obtain a patent….” (35 USC section 101) and define an inventor as “the individual… who invented or discovered the subject matter of the invention” (35 USC section 100(a)). The PTO found that these statutes indicate that inventors must be natural persons.
The PTO also cited a Federal Circuit case holding that the state cannot be an inventor. In University of Utah v. Max-Planck…., 734 F.3d 1315, 1323 (Fed. Cir. 2013), the court had held that conception of the invention determines inventorship, and that conception is the “formation in the mind of the inventor of a definite and permanent idea of the complete and operative invention.” In other cases, the Federal Circuit has held that corporations cannot be inventors. Based on these decisions, the PTO concluded that only natural persons could be inventors.
So, DABUS will have to wait. Some day, the law might just allow machines to be named as inventors.