Tech & Sourcing @ Morgan Lewis


On September 2, 2021, the US District Court for the Eastern District of Virginia granted the United States Patent and Trademark Office’s (USPTO’s) motion for summary judgement, finding that an artificial intelligence (AI) system cannot be named as an inventor on a patent.

The action concerned two patent applications that Stephen Thaler had filed with the USPTO, which he alleged should not have been rejected by the Office. The USPTO had rejected the applications on the basis that no natural person was identified as an inventor. Thaler argued that a patent application for an AI-generated invention should list the AI system as the inventor when the AI system has met the invention criteria. Thaler alleged that he developed and applied advanced AI systems that are capable of generating patentable output under conditions where no natural person traditionally meets inventorship criteria. Thaler is the owner of “DABUS,” an AI machine that “invented” a light beacon that flashes in a new and inventive manner to attract attention, and a beverage container based on fractal geometry.

The court held that the question of whether the Patent Act requires that an “inventor” be a human being is a question of statutory construction. Accordingly, the plain language of the statute controls, which provides that an “inventor” means the individual, or if a joint invention, the individuals collectively who invented or discovered the subject matter of the invention The court stated that based on Supreme Court precedent and the ordinary usage of the term, an “individual” means a “natural person.” Further, the court refuted the plaintiff’s policy arguments that the general purpose of the Constitution’s Patent Clause and the Patent Act require that the statute be read to encompass AI machines as inventors. The court stated that Congress defined an inventor as an individual through the America Invents Act in 2011 when AI systems were already in existence. The court further stated that as technology evolves, there may come a time when AI reaches a level of sophistication to satisfy the accepted meanings of inventorship. However, when that time arrives, it will be up to Congress to decide how, if at all, it wants to expand the scope of patent law.

The pace of AI adoption is increasing in many areas, particularly in the field of biopharma. The purpose of the patent system is to encourage invention and disclosure in exchange for a monopoly on the invention. If AI systems increasingly develop inventions on their own without a human “inventor” to qualify for patent protection, the patent system will fail to protect key inventions and deter investment in such inventions.

Additional Resources

IP partner David Sanker and IP associate Jianbai “Jenn” Wang have previously written informative articles on AI inventorship issues, including a proposal on how to address some of the existing issues and methods for protecting AI inventions. Please see below for links to their articles: