Mandate Issues in AI-Developed Technology Patent Dispute After Fed Cir. Denies Rehearing

On Thursday, the Federal Circuit Court of Appeals issued a mandate in the case brought by Stephen Thaler challenging the notion that inventions generated by artificial intelligence (AI) are unpatentable. The mandate will resolve the case in favor of the United States Patent and Trademark Office (PTO) unless Thaler chooses to appeal to the Supreme Court.

Thaler argued that his AI system, “Device for the Autonomous Bootstrapping of Case Unified Science,” or “DABUS,” a collection of source code and a software program, was the inventor of two patents, but the PTO disagreed, finding the patent applications as incomplete because they did not list a human as the inventor. 

The PTO then denied Thaler’s administrative appeal and the Eastern District of Virginia affirmed in a summary judgment opinion. In August, the Federal Circuit ruled against Thaler, defining “individual” to mean “human being” with regard to patent invention. Though the Patent Act does not define the term, the panel said its definition was backed by legal precedent and common usage.

In September, Thaler sought rehearing. The motion argued that the panel’s decision was incorrect for a number of reasons, including that the dictionary definitions relied upon by the Federal Circuit actually include AI.

The filing also said that the opinion disregards several critical Supreme Court cases as well as the explicit language of the statute. Lastly, Thaler averred that the decision “goes against the purpose of the Patent Act to incentivize innovation, encourage disclosure of trade secrets, and promote commercialization of inventions.”

Last week, the Federal Circuit denied both Thaler’s requests for rehearing and rehearing en banc. Thaler is represented by Brown, Neri, Smith & Khan LLP and the PTO by the Department of Justice.