On Monday 24 April 2023, the Supreme Court of the United States (SCOTUS) declined to hear the appeal brought by Dr Stephen Thaler in relation to whether artificial intelligence (AI) can be named the inventor of a patent.
This decision means that the lower court’s ruling holds — US patents can only be issued to human inventors and that Dr Thaler’s AI system (Device for the Autonomous Bootstrapping of Unified Sentience or DABUS) could not be considered the legal creator of two inventions that Dr Thaler said it generated.
This is another roadblock for Dr Thaler on his worldwide quest to have his AI system recognised as an inventor in its own right. Eager readers will be aware that corresponding applications were also filed internationally. We have previously reported on the Australian decisions where the Federal Court of Australia originally found that AI can be an inventor in July 2021, before this was overturned by the Full Federal Court in April 2022. Dr Thaler’s application for special leave to appeal to the High Court was refused in November 2022.
When filing the writ of certiorari seeking to appeal to the SCOTUS, Dr Thaler cited the following reasons as to why an AI system should be recognised as the inventor of a patent:
- US Patent Act: The earlier decisions conflict with the text and structure of the US Patent Act as the Act ‘recognises a broad category of inventors’
- Previous case law: The earlier decisions are not consistent with previous decisions by the SCOTUS
- Opportunity: This case is the ‘ideal vehicle’ for resolving the question presented
- Policy: The patentability of AI-generated inventions is exceptionally important to the US and the world.
Dr Thaler argued that by denying patent protection to that ‘whole category of innovation’, the lower court’s decision restricts the US ‘patent system’s ability — and thwarts Congress’s intent — to optimally stimulate innovation and technological progress’ in the United States. The SCOTUS did not agree and ultimately declined to hear the challenge. Although no opinion was published by the SCOTUS, this appears to be consistent with the reasoning of the High Court of Australia which concluded that this case was not the ‘appropriate vehicle’ to consider the questions raised by Dr Thaler in his special leave application.
Dr Ryan Abbott, who has been advocating across the world for AI to be considered an inventor through his Artificial Inventor Project, gave the following quote in response to this decision:
‘We are disappointed by the decision, which we believe leaves a Federal Circuit precedent in place that will serve as a major disincentive to certain uses of AI in innovation. It is now up to Congress to decide whether to change the law to allow inventions to be protected regardless of how AI is used in the inventive process, and to help the US maintain its position as a world leader in innovation.’
We note the coincidental timing of this decision as it occurred the day before the US Patent and Trademark Office held its first public listening session on AI inventorship. During this session, in-house attorneys stated that naming AI as an inventor of patent applications could create new burdens for applications, limit patent protection, and potentially flood the office with flawed applications.
This decision by the SCOTUS means the United States remains in line with the current international treatment of AI, as patent applications naming DABUS as an inventor have so far been rejected in Australia, Germany, New Zealand, Taiwan, the European Union, and the United Kingdom. We note that an appeal remains on foot in the United Kingdom with the United Kingdom Supreme Court having heard the argument on 2 March 2023.
This is not likely to be the last we hear of Dr Thaler in the AI context. He recently challenged the US Copyright Office’s decision to deny copyright protection for art created by DABUS. We will keep you updated on further developments in relation to AI and IP.
