United States Court of Appeals for the Federal Circuit ______________________

STEPHEN THALER, Plaintiff-Appellant

v.

KATHERINE K. VIDAL, UNDER SECRETARY OF COMMERCE FOR INTELLECTUAL PROPERTY AND DIRECTOR OF THE UNITED STATES PATENT AND TRADEMARK OFFICE, UNITED STATES PATENT AND TRADEMARK OFFICE, Defendants-Appellees ______________________

2021-2347 ______________________

Appeal from the United States District Court for the Eastern District of Virginia in No. 1:20-cv-00903-LMB- TCB, Judge Leonie M. Brinkema. ______________________

Decided: August 5, 2022 ______________________

RYAN BENJAMIN ABBOTT, Brown, Neri, Smith & Khan, LLP, Los Angeles, CA, argued for plaintiff-appellant.

DENNIS BARGHAAN, JR., Office of the United States At- torney for the Eastern District of Virginia, United States Department of Justice, Alexandria, VA, argued for defend- ants-appellees. Also represented by JESSICA D. ABER; FARHEENA YASMEEN RASHEED, PETER JOHN SAWERT, Case: 21-2347 Document: 60 Page: 2 Filed: 08/05/2022

2 THALER v. VIDAL

MEREDITH HOPE SCHOENFELD, Office of the Solicitor, United States Patent and Trademark Office, Alexandria, VA.

MITCHELL APPER, Jerusalem, Israel, amicus curiae, pro se. ______________________

Before MOORE, Chief Judge, TARANTO and STARK, Circuit Judges. STARK, Circuit Judge. This case presents the question of who, or what, can be an inventor. Specifically, we are asked to decide if an arti- ficial intelligence (AI) software system can be listed as the inventor on a patent application. At first, it might seem that resolving this issue would involve an abstract inquiry into the nature of invention or the rights, if any, of AI sys- tems. In fact, however, we do not need to ponder these met- aphysical matters. Instead, our task begins – and ends – with consideration of the applicable definition in the rele- vant statute. The United States Patent and Trademark Office (PTO) undertook the same analysis and concluded that the Patent Act defines “inventor” as limited to natural persons; that is, human beings. Accordingly, the PTO denied Stephen Thaler’s patent applications, which failed to list any hu- man as an inventor. Thaler challenged that conclusion in the U.S. District Court for the Eastern District of Virginia, which agreed with the PTO and granted it summary judg- ment. We, too, conclude that the Patent Act requires an “inventor” to be a natural person and, therefore, affirm. I Thaler represents that he develops and runs AI sys- tems that generate patentable inventions. One such sys- tem is his “Device for the Autonomous Bootstrapping of Case: 21-2347 Document: 60 Page: 3 Filed: 08/05/2022

THALER v. VIDAL 3

Unified Science,” which Thaler calls “DABUS.” Thaler has described DABUS as “a collection of source code or pro- gramming and a software program.” Supp. App. at 781. In July 2019, Thaler sought patent protection for two of DABUS’ putative inventions by filing two patent appli- cations with the PTO: U.S. Application Nos. 16/524,350 (teaching a “Neural Flame”) and 16/524,532 (teaching a “Fractal Container”). 1 He listed DABUS as the sole inven- tor on both applications. Thaler maintains that he did not contribute to the conception of these inventions and that any person having skill in the art could have taken DABUS’ output and reduced the ideas in the applications to practice. 2 In lieu of an inventor’s last name, Thaler wrote on the applications that “the invention [was] generated by artifi- cial intelligence.”