Can AI Be an Inventor? Legal, Technical, and Practitioner Views of Thaler v. Vidal

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First, AI beat man at chess. Then, at diagnosing illnesses. Now, it may be encroaching onto one of the core activities that make us human: inventing.

That is, at least, the contention of Dr. Stephen Thaler, who claims that his AI system has invented new technology in which he, as the original creator of the system, played no inventive role. When he filed for patents for his machine’s inventions, he named the machine as sole inventor. Patent offices in countries around the world, however, have disagreed that machines can be inventors, holding that the term legally applies to humans only. A decision by the USPTO denying his patent application on such grounds is now up for appeal before the Federal Circuit, with oral arguments set to begin June 6th.

In a series of four articles, students of Professor Colleen V. Chien’s class on AI and the Law take an in-depth look at Thaler’s appeal, the technology at the heart of his patent applications, and the prevailing attitude toward the issue of AI inventorship among patent attorneys.

• The first post covers Dr. Thaler’s legal arguments and the nearly uniform rejection of AI inventorship by Patent Offices and courts across the world.
• The second post summarizes the DABUS technology based on a review of Dr. Thaler’s patent applications, technical descriptions, and existing patents.
• The third post reports on the findings of a small survey of patent prosecutors: less than 10% of whom have encountered AI inventorship issues, but 40% of whom expressed concern that the issue of AI inventorship would impact innovation in their fields.
• The fourth post considers how the classic standard in patent law of a “person of ordinary skill in the art” will be tested as AI systems become more important to innovation.

Each of our writers brings an exceptional degree of knowledge to bear on the topic. In addition to a juris doctorate, their backgrounds span a bachelor’s degree in neurobiology, a masters of science in electrical engineering, and a PhD in computer engineering, as well as more than three decades of combined experience in patent prosecution.

Dr. Thaler’s case has broached the question of how, or whether, to name AI as an inventor under the international patent regime. While experts may debate how close we are to truly inventive AI, there is little doubt that the field is making quick progress. Indeed, the question of whether an AI can invent without human intervention has already been forced upon us by Dr. Thaler’s case. As his attorney Ryan Abbott wrote in a blog post, “This premise is not science fiction or even merely possible, but is probable if not inevitable.”

This series is part of Santa Clara Law’s AI and Law for Social Impact and Equity Blog, the blog of Professor Colleen Chien (@colleen_chien)’s AI and the Law class . The 2022 blog was edited by Henry Johnson (SCU Law ‘22).