In his petition for certiorari, Stephen Thaler had asked the U.S. Supreme Court to reverse the Federal Circuit decision in which the court ruled that artificial intelligence (AI) could not be listed as the sole inventor.  However, the Supreme Court has now denied Thaler’s petition, and it is now effectively up to Congress to act to promote any change on the issue.  As Thaler noted in his petition, this issue is unlikely to be appealed to the Supreme Court again.   Particularly, the Federal Circuit has already denied en banc rehearing; additionally, the Federal Circuit is the only court of appeals with jurisdiction over questions of patent law, so no circuit split will occur.  Indeed, as the law is essentially settled at this point, Applicants are unlikely to even file patent applications listing AI as the sole inventor, and thus the fact pattern is unlikely to repeat itself.

It is not impossible that Congress will act.  For instance, if enough other jurisdictions decide to allow patents with only AI listed as an inventor, Congress may not want the U.S. to fall behind, and so may act to keep the U.S. competitive.  In this regard, in one example of another jurisdiction, the European Patent Office accepts that the “owner of a device involved in an inventive activity” may designate himself or herself as the inventor.  But this solution is not possible in the U.S. under the Patent Act.  In addition, South Africa has granted Stephen Thaler a patent with his AI system listed as the inventor.  And, Saudi Arabia has accepted Stephen Thaler’s ownership of an application with his AI system listed as the inventor.  Stephen Thaler also has related pending patent applications in multiple other jurisdictions.

Moreover, the inability to list AI as the sole inventor on a patent application incentivizes Applicants to inaccurately designate a human being as the inventor on the patent application.  Many Applicants will likely try this, even if it means that there will be an ensuing court battle over patent validity.  Alternately to listing AI as the inventor, some potential Applicants will skip the patent system all together, and instead seek trade secret protection.

Notwithstanding the Supreme Courts denial of Stephen Thaler’s petition, an open question remains as to if an AI system may be listed as a joint inventor along with a human inventor on a patent application.  For example, the Federal Circuit had, in large part, decided against Stephen Thaler based on its interpretation of the word “individual.”  However, rather than use the word “individual,” for joint inventors, one portion of the Patent Act uses the word “persons.”  (see 35 U.S.C. 116(a) stating, “When an invention is made by two or more persons jointly, they shall apply for patent jointly…).

If listing an AI system as a joint inventor on a patent application were to be possible, it is likely that many patent applications would be filed listing both human and AI inventors.  In this regard, it would be simple for Applicants to draft patent applications such that it is proper to list both the AI system and a human as inventors.  For example, inventorship is determined based on the claims of an application; and the drafter of a patent application could easily draft a claim set with mostly claims to an invention created by AI, but with one dependent claim to a variation conceived of by the human (assuming such variation contributes to the claimed invention in a qualitatively significant way). See Pannu v. Iolab Corp., 155 F.3d 1344, 1351 (Fed. Cir. 1998) (link). 

As this shows, there are open questions regarding AI and inventorship.  However, as it stands now, in the U.S., AI may not be listed as the sole inventor on a patent application.


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