Artificial intelligence can be a patent 'inventor,' U.S. appeals court told

The United States Court of Appeals for the Federal Circuit is seen in Washington, D.C.
The United States Court of Appeals for the Federal Circuit is seen in Washington, D.C., U.S., August 30, 2020. REUTERS/Andrew Kelly
  • Computer scientist has tried to get AI patent protections worldwide
  • Federal Circuit skeptical that an inventor can be non-human

(Reuters) - A computer scientist on Monday tried to persuade a U.S. appeals court that his artificial intelligence system should be credited for two inventions it generated, in a novel dispute on the proper role of AI in patent law.

Stephen Thaler's attorney told the U.S. Court of Appeals for the Federal Circuit that Thaler's DABUS system should be considered the inventor on patent applications covering a beverage container based on fractal geometry and a light beacon that flashes in a new way.

A three-judge panel seemed skeptical, however, of the argument that entities other than human beings can be considered inventors.

Thaler has been engaged in a worldwide effort to win patents for inventions created by his DABUS system, which stands for "Device for the Autonomous Bootstrapping of Unified Science." His applications have been rejected by the United Kingdom, the European Union and Australia, though South Africa's patent office has awarded a DABUS patent.

Thaler separately filed a lawsuit in Washington, D.C., federal court last week over the U.S. Copyright Office's rejection of his bid for a copyright covering AI-created artwork.

The case argued on Monday stems from the U.S. Patent and Trademark Office's rejection of two DABUS patent applications. A Virginia federal court affirmed that ruling last year, finding AI cannot be an inventor under U.S. patent law.

Thaler's attorney Ryan Abbott of Brown Neri Smith & Khan told the Federal Circuit panel that the decision was "at odds with the plain language and purpose of the Patent Act," which is meant to promote innovation and does not say that an inventor must be a natural person.

The law does, however, prohibit refusing patents based on "the manner in which the invention was made," Abbott said.

The judges pushed back on Thaler's interpretation.

Chief Circuit Judge Kimberly Moore noted that the Patent Act defines an "inventor" as an "individual or individuals collectively."

"How can AI be an 'individual?'" she asked.

Circuit Judge Richard Taranto said artificial intelligence is usually defined to refer "to the capability, not to the machine that has it," which would make it "extremely odd" to allow an AI system to be named as an inventor.

"An inventor would not even be a human intelligence, it would be the human," Taranto said.

Assistant U.S. Attorney Dennis Barghaan, arguing for the U.S. Patent and Trademark Office, emphasized that the U.S. Supreme Court has defined the term "individual" in federal statutes like the Patent Act to mean a human being.

Circuit Judge Leonard Stark was also on the panel.

The case is Thaler v. Vidal, U.S. Court of Appeals for the Federal Circuit, No. 21-2347.

For Thaler: Ryan Abbott of Brown Neri Smith & Khan

For the PTO: Dennis Barghaan of the U.S. Attorney's Office for the Eastern District of Virginia

Read more:

Case to Watch: Can AI be a patent inventor? Virginia judge asked to weigh in

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Blake Brittain reports on intellectual property law, including patents, trademarks, copyrights and trade secrets, for Reuters Legal. He has previously written for Bloomberg Law and Thomson Reuters Practical Law and practiced as an attorney. Contact: 12029385713