USPTO decides patents cannot be granted on inventions created by artificial intelligence.

A patent is a set of exclusive rights granted to the inventor of an invention that meets certain requirements. An inventor gains patent protection for their invention in the United States by filing a patent application with the United States Patent and Trademark Office. The USPTO will assign an examining attorney to review the patent application and determine whether the inventor is entitled to patent protection.

One of the requirements that a patent application must comply with is, the application must be filed in the name of the true inventor. An inventor is anyone who contributes to the subject matter of one or more of the claims of the application. In many instances more than one person is an inventor. A person may be named as an inventor even if he or she did not work on the invention at the same time as the other inventor or inventors. Similarly, the fact that one person’s contribution is less than the others does not preclude him or her from being named as an inventor.

Even though an inventor is named on a patent application, frequently the inventor is not the party who filed the patent application. Many companies require their employees to assign all rights to inventions created during employment to the company. The assignee of a patent is frequently the party that files the patent application and communicates with the USPTO. While the actual inventor must be named on the patent application and sign some paperwork, the assignee typically steers the patent application process.

Artificial Intelligence is presently a hot topic. Computer scientists are developing different artificial intelligence systems to help with financial decisions, traffic control and inventory management. The question then becomes, are inventions created by artificial intelligence eligible for patent protection? An argument can be made that an artificial intelligence could be named as the inventor, and the owner of artificial intelligence would be the assignee. Academics and philosophers could debate the topic endlessly, in the mean time the USPTO must take a definitive stance because patent applications are now being filed for inventions created by artificial intelligence.

In April 2020 the USPTO published a petition decision explaining that, under current law, only natural persons may be named as an inventor in a patent application. This matter started in July 2019 with a patent application listing the inventor as DABUS. The assignee was one Mr. Steven Thaler. The patent application also included a statement of inventorship which claimed that the invention was conceived by a creative machine named DABUS and that it should be named as the inventor.

The USPTO responded with a Notice to File Missing Parts, namely that the legal name of the inventor was missing from the application. Mr Thaler petitioned for review of the Notice, asking that it be vacated as unwarranted or void.

The USPTO ultimately concluded that the wording of the patent statute precludes machines from being considered inventors. For instance: 35 U.S.C. § 101 § 101 – Inventions Patentable: Whoever invents or discovers any new and useful process, machine, manufacture, or composition of matter, or any new and useful improvement thereof, may obtain a patent therefor, subject to the conditions and requirements of this title. The USPTO interpreted the phrase “whomever” suggests a natural person. This interpretation is reinforced by Federal Circuit case law.

Inventorship has long been a condition for patentability and the name of the inventor is expressly required for a patent application to be considered complete. Because the patent application did not name a natural person as an inventor and a patent application requires an inventor, the USPTO concluded that the application was incomplete.

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