Inventors Under the Patent Act

In Thaler v. United States Patent and Trademark Office, the Federal Circuit affirmed the lower court’s ruling that the Patent Act requires an “inventor” to be a natural person. The sole issue on appeal was whether an AI software system can be an inventor under the Patent Act. The Court started its analysis with the statutory text and ended its analysis there as well since its language was clear and unambiguous. The Patent Act expressly provides that inventors are “individuals.” Although the Patent Act does not define “individuals,” the Court noted that the Supreme Court has explained that “individuals” ordinarily means human beings unless there is an indication that Congress meant otherwise. The Court noted that there is no such indication. To the contrary, other sections of the Patent Act also confirm the understanding that by referring to an individual as “himself” or “herself,” and not “itself,” Congress intended to refer to a natural person. Therefore, the Court upheld the lower court’s ruling that “inventor” must be a natural person. Importantly, the Court noted that its holding doesn’t apply to the cases in which inventions are made by humans with the assistance of AI.

Practice Tip: Companies that rely heavily on AI should be aware that having humans involved in the creation and development of intellectual property is essential for taking full advantage of the US patent system. This is because machines and AI are not eligible to be listed as inventors in a US patent application. It is important for businesses to recognize this, as it will help them protect their inventions and original works from theft or infringement in the future.