In a Decision on Petition issued in April, and signed by Deputy Commissioner for Patent Examination Policy Robert W. Bahr, the U.S. Patent and Trademark Office refused to vacate a Notice to File Missing Parts of Nonprovisional Application mailed on August 8, 2019 in U.S. Application No. 16/524,350.  The '350 application, which is entitled "Devices and Methods for Attracting Enhanced Attention, was filed on July 29, 2019.

The Decision notes that an Application Data Sheet ("ADS"), substitute statement under 37 CFR 1.64 in lieu of declaration under 35 U.S.C. § 115(d), statement under 37 CFR 3.73(c), assignment, and Statement of Inventorship accompanied the application papers.  The ADS listed a single inventor with the given name "[DABUS]" and the family name "(Invention generated by artificial intelligence)," and listed the Applicant as the Assignee "Stephen L. Thaler."  The substitute statement listed "DABUS (the invention was autonomously generated by artificial intelligence)" as the inventor and was executed by Mr. Thaler.  The 3.73(c) statement identified Mr. Thaler as the assignee of the application.  The assignment assigned the interest of "DABUS, the Creativity machine that has produced the . . . invention" in the '350 application to Mr. Thaler, with Mr. Thaler executing the document on behalf of both DABUS, as legal representative of the assignor, and himself as assignee.  The Statement of Inventorship states that the invention was conceived by a "creativity machine" named "DABUS."

The Office issued a Notice to File Missing Parts of Nonprovisional Application on August 8, 2019, which indicated that the ADS for the '350 application did not identify each inventor by his or her legal name.  In response to the Notice, a petition under 37 CFR 1.181 was filed, requesting supervisory review of the Notice and also requesting that the Notice be vacated as unwarranted and/or void.  The Office issued a second Notice to File Missing Parts of Nonprovisional Application on December 13, 2019, and dismissed the petition under 37 CFR 1.181 on December 17, 2019.  In response to the second Notice, a second petition under 37 CFR 1.181 was filed on January 20, 2020, requesting reconsideration of the Office's dismissal of the first petition.

In the second petition, the Petitioner asserted that the invention disclosed in the '350 application was generated by a machine named "DABUS," and that the machine recognized the novelty and salience of the invention.  The Petitioner argued that inventorship should not be limited to natural persons and, therefore, that the naming of DABUS as the inventor in the '350 application was proper.

In response, the Decision states that:

To the extent the petitioner argues that an "inventor" could be construed to cover machines, the patent statutes preclude such a broad interpretation.  Title 35 of the United States Code consistently refers to inventors as natural persons.  For example, 35 U.S.C. § 101 states "Whoever invents or discovers any new and useful process, machine, manufacture, or composition of matter . . . may obtain a patent therefore, subject to the conditions and requirements of this title" (emphasis added).  "Whoever" suggests a natural person.

The Decision indicates that "interpreting 'inventor' broadly to encompass machines would contradict the plain reading of the patent statutes that refer to persons and individuals."

The Decision also cites the Federal Circuit's decision in Univ. of Utah v. Max-Planck-Gesellschaflzur Forderung der Wissenschaflen e.V., 734 F.3d 1315, 1324 (Fed. Cir. 2013), in support of its position.  In Univ. of Utah, the Federal Circuit explained that "inventors must be natural persons and cannot be corporations or sovereigns."  The Decision also noted that the Federal Circuit in Beech Aircraft Corp. v. EDO Corp., 990 F.2d 1237, 1248 (Fed. Cir. 1993), stated that "only natural persons can be 'inventors.'"

The Decision concludes that "because the ['350] application names a machine, '[DABUS] (Invention generated by artificial intelligence),' as the inventor, and because current statutes, case law, and USPTO regulations and rules limit inventorship to natural persons, the ['350] application does not comply with 35 U.S.C. § 115(a)."

In response to the Petitioner's argument that the Office should consider the position adopted by the European Patent Office and the Intellectual Property Office of the United Kingdom that DABUS created the invention at issue, but DABUS cannot be named as the inventor, the Decision notes that "the EPO and UKIPO are interpreting and enforcing their own respective laws (i.e., the European Patent Convention and the UK Patents Act 1977) as they apply to the applications before them."  Under U.S. patent law, however, a machine is not allowed to be named as the inventor in a patent application.

The Petitioner also argued that because the Office has granted patents relating to the DABUS machine itself, it had implicitly legalized the process by which DABUS arrived at the invention disclosed in the '350 application.  In response, the Decision countered that:

The granting of a patent under 35 U.S.C. § 151 for an invention that covers a machine does not mean that the patent statutes provide for that machine to be listed as an inventor in another patent application––any more than a patent for a camera allows the camera [to] hold a copyright.

The Decision therefore granted the petition to the extent that the decision of December 17, 2019 was reviewed, but denied the petition with respect to the Petitioner's request to vacated the Notice to File Missing Parts of Nonprovisional Application issued August 8, 2019.