May 3, 2023

On April 24, 2023, the U.S. Supreme Court denied Dr. Stephen Thaler’s March 2023 petition for review of the Federal Circuit’s holding in Thaler v. Vidal, 43 F.4th 1207 (Fed. Cir. 2022), that the Patent Act requires inventors listed on patent applications to be human beings.  Dr. Thaler has been pursuing patent coverage in the U.S. and many other countries for inventions created by his artificial intelligence (AI) system referred to as DABUS.  The applications name DABUS as the sole inventor (with clarifying language explaining that an artificial intelligence autonomously generated the claimed invention) and Dr. Thaler as the applicant/owner.  Of these applications, only one has granted as a patent to date—South Africa Patent No. ZA 2021/03242B.

Some members of Congress have shown interest in considering whether the current US intellectual property laws regarding AI-generated inventions and creations should be changed.  Two members of the Intellectual Property Subcommittee of the Senate Judiciary Committee sent a letter in October 2022 to both the Director of the U.S. Patent & Trademark Office (USPTO) and the Register of Copyrights, U.S. Copyright Office (USCO), in which they agreed that AI-generated inventions or creations do not qualify for protection under current intellectual property laws. See October 2022 Letter.pdf.  They expressed interest, however, in what the law should be in the future and whether changes to the current intellectual property laws may be needed to incentivize future AI-generated innovations and creations. Id.  To that end, they asked that the USPTO and USCO jointly establish a national commission on AI by October 17, 2023, whose goal will be to “assess the role of AI across all aspects of our innovation economy and consider what changes to existing law, if any, should be made in order to continue encouraging the robust development of AI and AI generated inventions and creations.” Id.  As part of its mission, the national commission will also “consider what new legal frameworks may be needed in order to appropriately balance the proper scope of protections for AI related innovations and creations.” Id.  The letter asks that the national commission seek to complete its work and provide a report to Congress by December 31, 2024. Id.

In response, the USPTO requested comments on the issue of AI and inventorship in February.  The USPTO also held a related public listening session on April 25 to hear stakeholder input.  Another public listening session for stakeholder input is scheduled to be held on May 8.  Information about the public listening sessions and other USPTO initiatives on AI can be found at https://www.uspto.gov/initiatives/artificial-intelligence/artificial-intelligence-reports.

For its part, the USCO recently announced a new initiative to examine U.S. copyright law and policy issues raised by AI.  Information about the initiative and related projects and events can be found at https://www.copyright.gov/ai/.