By: Adam Wasinger
In July 2019, physicist and artificial intelligence (“AI”) researcher Stephen Thaler filed two relatively benign patent applications: one for a food container and one for an emergency flashlight. What made them unique was not their function, however, but their inventor. According to Thaler, this inventor was his AI “creativity engine,” DABUS. On Stephen Thaler’s own admission, he possessed no expertise in either food containers or flashlights and could not have contributed to the patents in a way that would qualify him for inventor’s rights. As such, he listed DABUS as the inventor for both patents. The United States Patent and Trademark Office (“USPTO”), however, argued that only natural persons may obtain patent rights, and denied the applications.
In August 2020, Thaler filed a complaint against the USPTO and its then director, Director Andrei Iancu, in the Eastern District of Virginia in an attempt to reverse his USPTO denials and acquire patent rights for DABUS. In his complaint, Thaler argued that the USPTO denial created an undesirable outcome whereby inventors who utilize AI assistance are forced to make misrepresentations, “claiming credit for work they did not perform.” Thaler and his team further argued that granting such rights is consistent with the Constitutional mandate to “promote science and the useful arts,” and that the DABUS denial disincentivizes the creation of socially beneficial inventions.
Under the Administrative Procedures Act (“APA”), however, courts give extreme deference to agency decisions. Citing this standard, the USPTO’s primary defense was that its decision that only natural persons are eligible for patent rights “was not arbitrary and capricious, an abuse of discretion, or otherwise not in accordance with the law.” The USPTO does not even reference “natural persons” once in its entire answer. Thaler countered in a motion for summary judgement, alleging that restricting patent rights to “natural persons” is effectively rulemaking on substantive patent law. As Congress has not granted the USPTO this power through legislative action, Thaler argues that the USPTO overstepped its administrative authority. The Court, Thaler asserts, thus does not owe the USPTO its traditional APA deference, but rather should review the decision de novo.
Thaler is a part of a growing movement of individuals who are attempting to acquire intellectual property rights for AI “creators.” When considering the context and implications of his arguments, it is evident why he is pursuing them to such lengths. No American court has yet ruled on these issues, and this silence becomes all the more deafening as AI creators begin to permeate the patent and copyright spheres. Simply put, it is a vexing and important legal issue many like Thaler want answered.
Despite his best efforts, Thaler is unlikely to succeed for a number of reasons. First, this is not the only time or place he has attempted to secure rights for DABUS-invented patents, having already received and appealed denials from British, German, and European Union patent regulators. Second, counter to Thaler’s argument, the USPTO decision is likely going to receive the Court’s usual deference under the APA. Though court’s have not ruled on the specific issue of AI as creators or inventors, the idea that only “natural persons” are entitled to IP rights has court precedent in copyright law: precedent the US Copyright Office already follows. Moreover, the USPTO is making simple interpretations of the plain text of various patent statutes. Thus, the argument that the USPTO is making decisions on substantive patent law as opposed to applying precedent from adjacent IP law or permissible statutory interpretation is a stretch. The Eastern District of Virginia is then likely to give the USPTO traditional APA deference and affirm its denial to grant DABUS patent rights.
Thaler v. Iancu is the first in what will become a long line of U.S. cases surrounding IP rights and artificial intelligence that will only become more frequent the more AI technology develops. Considering the United States’ status as the world’s largest exporter of intellectual property, this ruling will likely serve as a guidepost not just for future federal U.S. courts, but for jurisdictions across the world wrestling with similar issues.
 Kate Gaudry et al., Should We Require Human Inventorship? Submit Your Amicus Brief by March, IP Watchdog (Feb. 11, 2021), https://www.ipwatchdog.com/2021/02/11/require-human-inventorship-submit-amicus-brief-march/id=129922/; Complaint at 3, Thaler v. Iancu, No. 1:20-cv-00903 (E.D. Va. filed Aug. 6, 2020).
 Todd Feathers, This Guy is Suing the Patent Office for Deciding an AI Can’t Invent Things, Vice (Aug. 24, 2020, 9:00 AM), https://www.vice.com/en/article/5dz44b/this-guy-is-suing-the-patent-office-for-deciding-ai-cant-invent-things; see also Imogen Ireland & Jason Lohr, ‘DABUS’: the AI topic that patent lawyers should be monitoring, ManagingIP (Sept. 9, 2020), https://www.managingip.com/article/b1n8q624s4vyv4/dabus-the-ai-topic-that-patent-lawyers-should-be-monitoring(“…short for Device for the Autonomous Bootstrapping of Unified Sentience…”).
 Samantha Cole, Artificial Intelligence Cannot be Inventors, US Patent Office Rules, Vice (Aug. 28, 2020, 11:46 AM), https://www.vice.com/en/article/akw5g4/artificial-intelligence-cannot-be-inventors-us-patent-office-rules.
 In re Application of Application No.:16/524,350, 2020Dec. Comm’r Pat. 3-4, https://www.uspto.gov/sites/default/files/documents/16524350_22apr2020.pdf?utm_campaign=subscriptioncenter&utm_content=&utm_medium=email&utm_name=&utm_source=govdelivery&utm_term= (citing 35 U.S.C. §§ 100, 101, 115) (“[I]nterpreting “inventor” broadly to encompass machines would contradict the plain meaning of the patent statutes that refer to persons and individuals.”).
 Feathers, supra note 2.
 Complaint at 7, Thaler v. Iancu, No. 1:20-cv-00903 (E.D. Va. filed Aug. 6, 2020).
 U.S. Const. art. I, § 8, cl. 8.
 Complaint at 8-9, Thaler v. Iancu, No. 1:20-cv-00903 (E.D. Va. filed Aug. 6, 2020).
 Ranchers Cattlemen Action Legal Fund United Stockgrowers of America v. U.S. Dep’t of Agric., 499 F.3d 1108, 1115 (9th Cir. 2007) (“This standard of review is ‘highly deferential, presuming the agency action to be valid and affirming the agency action if a reasonable basis exists for its decision.’” (quoting Indep. Acceptance Co. v. California, 204 F.3d 1247, 1251 (9th Cir. 2000))).
 Answer at 1, Thaler v. Iancu, No. 1:20-cv-00903 (E.D. Va. filed Nov. 13, 2020); see also 5 U.S.C. § 706(2) (enumerating the various thresholds for unlawful agency action).
 See Answer at 1, Thaler v. Iancu, No. 1:20-cv-00903 (E.D. Va. filed Nov. 13, 2020)(confining its defense to the deference that courts show agency decisions).
 Memorandum of Law in Support of Motion for Summary Judgement 14-16, Thaler v. Iancu, No. 1:20-cv-00903 (E.D. Va. filed Jan. 18, 2020).
 See Edward Lee, Digital Originality, 14 Vand. J. Ent. & Tech. L. 919, 921 (2012) (commenting on the lack of judicial guidance on ownership issues relating to AI and copyright).
 Feathers, supra note 2.
 U.S. Copyright Off., Compendium of U.S. Copyright Off. Practices § 313.2 (2d ed. 2017) (precluding copyright in a “photograph taken by a monkey”); see also Naruto v. Slater, 888 F.3d 418, 426 (9th Cir. 2018) (holding a monkey lacked standing under the Copyright Act because it was a “non-human”).
 See Frank Cullen, The State of American Intellectual Property: Protecting American Jobs¸ U.S. Chamber of Com. (Feb. 20, 2017, 10:00 AM), https://www.uschamber.com/series/above-the-fold/the-state-american-intellectual-property-protecting-american-jobs#:~:text=The%20U.S.%20is%20also%20the,This%20is%20why%20IP%20matters (stating that IP makes up almost 40 percent of all U.S. exports).