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June 18, 2020 | By S&H
Posted in: S&H IP Blog | USPTO News

When AI Starts to Invent

What happens when Artificial Intelligence (AI) systems start to ”invent”? Can companies list the AI system as an inventor in a Patent Application? The United States Patent and Trademark Office (USPTO) answered this very question with a definitive no, when it denied a Petition in April.


Application 16/524,350 entitled ”Device for Attracting Enhanced Attention” was filed on July 29, 2019, and listed DABUS an AI system as the sole inventor. A Statement of Inventorship indicated that the invention was conceived by a ”creativity machine” named DABUS and as such it was the inventor. The Application also listed Stephen L. Thaler as the Applicant and Assignee.

In response to the Application, the USPTO issued a Notice to File Missing Parts of Nonprovisional Application stating the ADS did not identify each inventor by his or her legal name. The Applicant filed a petition in response to the Notice, arguing that inventorship should not be limited to only natural persons.


The USPTO relying on a plain reading of patent statutes 35 USC §100(f) and (g); 35 USC §101; 35 USC §115(a), (b), and (h)(1) held that an inventor must be a natural person. The Office arrived at this decision by analyzing how an inventor was referred to within the statute. Specifically, the Office found the use of the terms ”individual”, ”person”, and ”whoever” within the statute were used to refer to an inventor. As such the USPTO asserted that when these statues were written, the term inventor was understood to be a natural person. Thus, the USPTO concluded that an inventor cannot be interpreted to broadly cover machines such as AI systems.

The USPTO also relied on Federal Circuit precedent to support its decision. Specifically, the USPTO noted that the Federal Circuit had stated that the touchstone of inventorship is the action of conception. See Burroughs Wellcome Co. v. Barr Labs., Inc., 40 F.3D 1223, 1227-28 (Fed. Circ. 1994). Further, the USPTO noted Federal Circuit precedent stated that conception is a mental act limited to natural persons. See Beech Aircraft Corp. v. EDO Corp., 990 F.3d 1237, 1248 (Fed. Cir. 1993).

Implications of the Decision

In 2020, corporations around the world are expected to spend roughly $49.2 billion in R&D on AI technology. These corporations may benefit from being allowed to obtain patent protection for ”any new and useful process, machine, manufacture, or composition of matter, or any new and useful improvement thereof”. Therefore, the USPTO”™s decision and similar ones issued by the European and UK patent offices, may be seen as a minor setback for corporations. However, the USPTO left open the possibility that a natural person who meets the criteria for inventorship, perhaps the inventor of the AI system or the designer of the AI”™s specialized trainer set that leads to a novel invention, could be listed as the rightful inventor.


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