The Software IP Report

An Inventor Must Be a Natural Person, Not a Machine

The Bicentennial Man is out of luck.* The Patent Office recently issued a ruling that only a human can be an inventor.

The application at issue listed “DABUS” as the sole inventor. DABUS is a collection of neural nets designed as a “creativity machine” by Stephen Thaler, who is also the assignee of the application. The application was filed with the help of a team to serve as a test case for categorizing machines as inventors. The team filed the application not only with the United States Patent and Trademark Office but also with the European Patent Office and the United Kingdom Patent Office. The EPO and the UKIPO both rejected the application by stating that an inventor must be human.

The USPTO followed suit, also ruling that an inventor must be a natural person. The ruling starts with the language of Title 35, the part of the U.S. Code pertaining to patents. The statute provides this definition: “The term ‘inventor’ means 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). In finding that the statutes treat inventors as necessarily human, the PTO relied on this definition as well as other statutory references to inventors as “individuals,” “whoever,” and so on. (PatentlyO’s Dennis Crouch notes that Title 35 also uses “whoever” to encompass corporations, but the larger point still seems to stand.)

The other source of support for the PTO’s ruling was the Federal Circuit decision University of Utah v. Max-Planck-Gesellschaft zur Forderung der Wissenschaften. The court there ruled that a corporation could not be an inventor by reasoning that invention requires conception, which corporations cannot do because they do not have minds. “To perform this mental act [of conception], inventors must be natural persons and cannot be corporations or sovereigns.” The PTO found this statement decisive.

Thaler’s counterarguments did not fare well. Thaler claimed that “the referenced statutes are intended to compel an applicant to name a natural person even where the person does not meet the inventorship criteria.” But according to the PTO, “[i]dentifying a natural person, who did not invent or discover the subject matter of the invention, as the inventor in a patent application would be in conflict with the patent statutes. Accordingly, the petition decision … does not suggest that an applicant is compelled to list a natural person as an inventor who does not meet the inventorship criteria.” Thaler’s argument seems to assume that an invention is necessarily patentable, but it’s not clear what supports that assumption.

Thaler further makes several policy arguments about incentives to invent, which the PTO declined to address. The Federal Circuit—which is undoubtedly the next step for a test case intended to make law—may give the policy arguments more consideration.

Lessons for Practice

The lesson here is pretty simple: only list people as inventors. The complication comes with deciding whether a specific person should be listed. Thaler contended that he (or any other person) could not properly be listed as an inventor, but the PTO did not rule on that point. As articulated by the Federal Circuit, the standard for inventorship is conception: in whose mind was the invention first understood? Thaler’s contention that a person reading the output from a “creativity machine” cannot satisfy that standard should be interrogated further.

* – I was told not to use Star Trek jokes in this post, so this is the pop-culture reference you get instead of Data.