Artificial Intelligence (“AI”) is not just transforming technology but also influencing legal jurisprudence around the globe. A seminal case in this realm involves Stephen Thaler and his AI, Device for the Autonomous Bootstrapping of Unified Sentience (“DABUS”). While Thaler has attempted to patent DABUS in numerous patent offices in different countries, namely in the U.S., Europe, U.K. Australia, New Zealand, Germany, Israel, New Zealand, South Korea, and South Africa. While we will focus on the trajectory of the patents (or lack thereof) listing DABUS as the inventor, much of the same narrative is repeated with other respective patent offices holding that DABUS cannot be an inventor for patent purposes. Further, our discussion will review ensuing guidelines from the United States Patent and Trademark Office (“USPTO”) that became effective April 11, 2024.

Stephen Thaler, an AI enthusiast, invented an AI system called DABUS. The controversy arose when Thaler sought to attribute inventorship to two inventions generated by DABUS to the AI system itself. Thaler argued that DABUS independently conceived the inventions without human input; hence, it should be deemed the inventor for the related patents. However, the USPTO denied his applications, stating that under current federal law, only natural persons could be recognized as inventors.

In an attempt to overturn the USPTO’s decision, Thaler took his case to the Federal Circuit, which upheld the USPTO’s decision. See Thaler v. Vidal, No. 21-2347 (Fed. Cir. August 5, 2022). Undeterred, Thaler sought a writ of certiorari to the Supreme Court. See Petition for Writ of Certiorari, Thaler v. Vidal, No. 21-2347 (Fed. Cir. August 5, 2022) . However, the Supreme Court declined to review the case, effectively endorsing the earlier rulings that only natural persons could be granted inventorship in patent applications.

The Thaler vs. USPTO case has significantly impacted how AI is viewed in the context of patents. In light of this case, the USPTO has issued new guidelines stating that the inventor must be a natural person for patent laws. See Federal Registrar Vol. 89,  No. 30 (February 13, 2024).  The guidelines also clarify that an AI, like DABUS, cannot be listed as an inventor in a patent application. This essentially means that until there is a change in legislation, AI systems cannot be recognized as inventors. The USPTO later filed guidance on the use of AI in practice before the USPTO which outlines the legal and ethical responsibility of practitioners when using AI. See Federal Registrar Vol. 89, No. 71 25609 (April 11, 2024).

The Thaler vs. USPTO case is a clear testament to AI’s legal challenges. While the Supreme Court’s refusal to review the case has put a pause on AI being recognized as an inventor, it has sparked a necessary debate on AI’s role in innovation and patent law. The USPTO’s guidelines have set a clear path for now, but as AI continues to evolve and play a more significant role in the invention, we will likely see more legal battles and potential changes in patent law.

Please join us Monday, April 29, 2024 at noon where we will discuss the AI patent saga and the newly effective guidelines issued by the USPTO. Jonathan Gutierrez, law clerk at SoCal IP, will lead the discussion.