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Artificial Intelligence Update: USPTO Urges Federal Circuit to Uphold Ruling That AI Cannot Be Called “Inventor” – Intellectual Property


United States: Artificial Intelligence Update: USPTO urges Federal Circuit to uphold ruling that AI cannot be called an ‘inventor’

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In three previous blog posts, we’ve discussed recent invention issues surrounding artificial intelligence (“AI”) and its implications for innovations in the life sciences – focusing specifically on scientist Stephen Thaler’s attempt to obtain a patent for an invention created by his AI system called DABUS (“Autonomous Unified Sentence Initiation Device). Most recently, we considered Thaler’s appeal against the District’s September 3, 2021 Eastern Virginia, which ruled that under patent law, an AI machine cannot be called an “inventor.” Continuing this series, we now look at the opposition recently filed by the USPTO at Thaler’s call.

In its opposing brief, the USPTO argued that under the “plain language that Congress has chosen to incorporate into the Patent Act”, only a human being can be considered an “inventor”. The USPTO first noted that the definitions of “inventor” and “co-inventor” in the Patent Act both unequivocally refer only to a “person” or “persons.” For example, “inventor” is defined under the Act as “the
individual or, if it is a joint invention, the
people collectively who invented or discovered the subject matter of the invention.”

Although the Patent Act does not explicitly define the term “individual,” the USPTO argued that in other cases where the term is not explicitly defined, courts have interpreted Congress’s use of term “individual” in a given statute as meaning a “human being”. “, unlike other things. The USPTO gave the example of Muhammad c. Palestinian Authoritya 2012 case in which the Supreme Court assessed whether Congress’s use of the term “individual in the Torture Victims Protection Act (“TVPA”) could be construed to include an “organization.” the Court cited several well-known dictionaries and examined the use of the term in “common parlance”, to determine that the ordinary meaning of the term “individual” refers only to a human being or natural person. Mohammed also refers to the Dictionary Act, 1 U.S.C. § 1, which provides that the statutory use of the term “individual” means something separate and apart from non-human beings.

The USPTO argued that the Supreme Court’s analysis in
Mohammed applies to both the Patent Act and the TVPA. For example, the term “individual” is used in the Patent Act as a noun, just as it is in the TVPA. And, according to the USPTO, just like the Mohammed The Court recognized that “no one refers in normal language to an organization as an ‘individual'”, it is equally true that “no one refers in normal language” to a machine or a collection of source code in as an “individual”. Further, the USPTO pointed out that the Dictionary Act applies not only to the TVPA, but also to all enactments of Congress – including the Patent Act.

Although the opinion of the Supreme Court in Mohammedacknowledges that Congress is free to give the term “individual” a “broader or different meaning”, such a “broader” interpretation by a court requires an “affirmative indication [that Congress] the intention of such an outcome. Here, the USPTO argues that Thaler never pointed to textual evidence that Congress had intended a broader meaning for the term. The USPTO argues that Thaler only made non-textual political arguments. For example, Thaler argues that denying AI inventorship would put the U.S. behind “other countries [that] promote the progress of science”, and would amount to “adopting[ing] Luddism.” However, according to the USPTO, these political considerations cannot overcome the plain meaning of the text.

We will continue to monitor this call as it has significant implications for life science companies using AI technologies, especially given the low likelihood of Congress acting on this issue in the near term.

Artificial Intelligence Update: USPTO urges Federal Circuit to uphold ruling that AI cannot be called an ‘inventor’

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