PatentNext Summary: Following the August 2022 Federal Circuit decision in Thaler v. Vidal, 43 F.4th 1207 (Fed. Cir. 2022), in which the court ruled that artificial intelligence (AI) could not be an inventor by itself, the USPTO has now requested comments regarding AI and inventorship. 


More specifically, in Thaler, Stephan Thaler’s patent applications listed no humans as inventors and rather listed his AI system, known as DABUS, as the inventor.  The Federal Circuit upheld the denial of Stephan Thaler’s patent applications based on the plain language of the Patent Act in which inventors are defined as “individuals.”  In particular, the Federal Circuit concluded that “[i]n the Patent Act, ‘individuals’ – and, thus, ‘inventors’ – are unambiguously natural persons.”

Yet, the Federal Circuit left open the question of inventorship for creations made by a human with substantial AI assistance.  The USPTO has now requested public comment on this, stating: “In the wake of the Thaler decision and in view of the current state of AI and machine learning, there remains uncertainty around AI inventorship. This uncertainty is becoming more immediate as AI, particularly machine learning, systems make greater contributions to innovation.”

In its request for comment, the USPTO asks a variety of questions.  For example, the USPTO asks some questions regarding the current state of the law.  For instance, the USPTO asks, “[i]f an AI system contributes to an invention at the same level as a human who would be considered a joint inventor, is the invention patentable under current patent laws?”  And, “[d]o inventions in which an AI system contributed at the same level as a joint inventor raise any significant ownership issues?“

The USPTO also asks questions regarding how AI tools are currently being used.  For example, the USPTO asks, “[h]ow is AI, including machine learning, currently being used in the invention-creation process?”  And, “[h]ow does the use of an AI system in the invention-creation process differ from the use of other technical tools?”

Stephan Thaler is currently appealing the ruling to the U.S. Supreme Court.  In the meantime, regardless of whether the Court hears the case, the USPTO’s request for comments remains open until July.

For additional information on AI inventorship, as courts across the world have considered this issue, see PatenNext’s article Can an Artificial Intelligence (AI) be an Inventor?


Subscribe to get updates to this post or to receive future posts from PatentNext. Start a discussion or reach out to the author of this post, Bill Samore, at or 312-474-6641. Connect with or follow Bill on LinkedIn.