US Judge Gets It Right: AI Doesn't Get Patents

Patents

from the HAL-says-this-is-correct dept

A month ago, we wrote about a perplexing (and dangerous) decision down in Australia ruling that an AI can be listed as the inventor of a patent. As we had explained, there was a concerted effort by a small group patent lawyers and this one dude, Stephen Thaler, to seek out patents for “inventions” that an AI created by Thaler called Dabus (“device for the autonomous bootstrapping of unified sentience”). As we explained in that and earlier posts, the entire point of the patent system is to provide incentives to humans to invent. An AI does not need such incentives. As we’ve highlighted in the past, the USPTO and the EU patent office have both rejected AI-generated patents. Australia’s patent office had done the same, but a judge there rejected that and said an AI could be listed as an inventor.

All of these situations involve Thaler/DABUS, as did a new ruling in the US which… thankfully has rejected the idea that an AI deserves patents after Thaler filed a lawsuit because of the USPTO rejection. I think there’s a separate issue here: which is what standing does Thaler have in the first place? If the argument is that “DABUS” is the inventor, it seems that… um… only DABUS should have the necessary standing to challenge the rejection of its patent application. The fact that Thaler thinks he has standing more or less shows how ridiculous the entire claim is in the first place.

After going through the background of the case, and discussing what level of deference the USPTO deserves, Judge Leonie Brinkema gets straight to the actual point, which is pretty simple: AI doesn’t get a patent.

Even if no deference were due, the USPTO’s conclusion is correct under the law. The question of whether the Patent Act requires that an “inventor” be a human is a question of statutory construction. Accordingly, the plain language of the statute controls…. As the Supreme Court has held: “The preeminent canon of statutory interpretation requires us to ‘presume that [the] legislature says in a statute what it means and means in a statute what it says there.’ Thus, our inquiry begins with the statutory text, and ends there as well if the text is unambiguous.”…

Using the legislative authority provided by the Constitution’s Patent Clause… Congress codified the Patent Act in 1952… and has amended the Patent Act a number of times in the ensuing sixty years. In 2011, Congress promulgated the America Invents Act, which, as relevant here, formally amended the Patent Act to provide an explicit statutory definition for the term “inventor” to mean “the individual, or, if a joint invention, the individuals who invented or discovered the subject matter of the invention.”… The America Invents Act also added that “joint inventor” means “any one of the individuals who invented or discovered the subject matter of a joint invention.”… Additionally, Congress has required that “[a]n application for patent shall be made, or authorized to be made, by the inventor . . . in writing to the Director.”… “[E]ach individual who is the inventor or a joint inventor of a claimed invention in an application for patent shall execute an oath or declaration in connection with the application” which “shall contain statements that–… such individual believes himself or herself to be the original inventor or joint inventor of [the] claimed invention.”

See where this is going?

As the statutory language highlights above, both of the definitions provided by Congress for the terms “inventor” and “joint inventor” within the Patent Act reference an “individual” or “individuals.”… Congress used the same term–“individual”–in other significant provisions of the Patnet Act which reference an “inventor,” including requiring that “each individual who is the inventor or a joint inventor” execute an oath or declaration…

The court then notes that in analyzing other laws, courts have long said that “individual” means human. And it also highlights that the language in the Patent Act makes it clear that it was intended to apply to humans — humans who can make a declaration about their own beliefs.

Congress’s use of the term “individual” in the Patent Act strengthens the conclusion that an “inventor” must be a natural person. Congress provided that in executing the oath or declaration accompanying a patent application, the inventor must include a statement “such individual believes himself or herself to be the original inventor or an original joint inventor of a claimed invention in the application.”… By using personal pronouns such as “himself or herself” and the verb “believes” in adjacent terms modifying “individual,” Congress was clearly reference a natural person.

Then there’s a fun bit of judicial eye-rolling, stating: “having neither facts nor law to support his argument,” the judge notes that Thaler’s argument is basically “but this is good for innovation.” But that’s not going to fly (leaving aside the fact that allowing AI to get patents would be objectively terrible for innovation, it’s also not how any of this works):

Plaintiff provides no support for his argument that these policy considerations should override the plain meaning of a statutory term.

It gets even worse for Thaler’s arguments. He argued that the PTO hadn’t properly considered the policy ramifications of not allowing AI to get patents, but as the judge notes, that’s clearly not true. It had. And it rejected the dumb idea.

Specifically, the USPTO points to a conference on artificial intelligence policy it held in January 2019, and to requests for public comment “on a whole host of issues related to the intersection of intellectual property policy and artificial intelligence” it issued in August and October 2019. In October 2020, the USPTO issued a comprehensive report on those comments.

And… what did that report say?

Many commentators disagreed with plaintiff’s view that artificial intelligence machines should be recognized as inventors…

Given how active Thaler and his lawyer friends have been around the globe, I imagine this is hardly the end of these campaigns. I imagine this ruling will be appealed, and how long will it be until some sucker of a Senator or Member of Congress, convinced by Thaler’s nonsense, will introduce a bill to amend the Patent Act to enable AI patents?

Filed Under: ai, artificial intelligence, dabus, patents, stephen thaler, uspto