A federal appeals court has ruled that, for the purposes of obtaining a patent, an artificial intelligence (AI) software program does not qualify as an "inventor," which the court concludes, at least for now, must be flesh and blood.

The U.S. Court of Appeals for the Federal Circuit, which handles patent cases (and is different from the U.S. Court of Appeals for the D.C. Circuit), said the statute is clear.

The U.S. Patent and Trademark Office (USPTO), pointing out that statute defines an inventor as  a "natural person," had denied a patent application that had simply said “the invention [was] generated by artificial intelligence,” concluding it did not have a legitimate inventor's name and was thus incomplete.

Stephen Thaler, who had sought the patent, said that he develops and runs AI systems that generate patentable inventions saying he had not personally "contribute[d] to the conception" of the inventions.

Thaler appealed the USPTO decision to a U.S. District Court for the Eastern District of Virginia, which agreed with the USPTO. Thaler then went to the appeals court.

That court said Friday (August 5) that it did not have to get into "the nature of invention or the rights, if any, of AI systems," but needed only to look to the statutory language, as USPTO and the lower court had done. The appeals court concluded that "the Patent Act requires that inventors must be natural persons; that is, human beings." ■

In what proved a busy day on the nominations front, President Joe Biden Tuesday (Oct. 26) signaled he is nominating Kathi Vidal to head the U.S. Patent and Trademark Office (USPTO) as undersecretary for intellectual property.

USPTO is currently headed by acting director Drew Hirshfeld.

Among other things, the Patent Office advises the president and top administration officials on IP policy, protection and enforcement.

The explosion of online video has made protecting that content from the potential, and reality, of widespread digital piracy an important issue for streamers.

Vidal has been managing partner at Winston & Strawn‘s Silicon Valley office, where she has represented both sides in high-profile patent disputes, including in front of the USPTO.

She has also been an advisor to standard-setting bodies on IP policies. She is also on the advisory board of CHIPS, a nonprofit advancing women “at the intersection of” law, tech and regulatory policy.

Her experience includes having been a lawyer for General Electric and Lockheed Martin and she has bachelor‘s and master‘s degrees in electrical engineering.

“The Motion Picture Association applauds President Biden’s nomination of Kathi Vidal to serve as the next Under Secretary of Commerce for Intellectual Property and Director of the U.S. Patent and Trademark Office (USPTO)," said Motion Picture Association chairman Charles Rivkin. “We look forward to continuing to work with the USPTO to ensure the continued success of the creative community and the strength of America’s copyright, trademark, and patent systems."

He pointed out just how important protecting his members' content is.

“The core copyright industries — including the film, television, and streaming industry — employ more than 5.7 million Americans who earn on average more than $107,000 annually," he said in praising the nomination. "In 2019 our industries in total added $2.5 trillion to the U.S. GDP and accounted for 12% of the economy. We brought back $219 billion in foreign sales — more than the American agricultural, pharmaceutical, aerospace, and electronics industries. Intellectual property fuels the world’s most successful creative community, and we look forward to Ms. Vidal’s confirmation to lead this critical agency.”

A bipartisan bill has been introduced that would restore the presumption of injunctive relief if a valid patent is infringed, and takes other steps to sew up what the authors say is a court weakening of patent rights.

In fact, the STRONGER (Support Technology & Research for Our Nation’s Growth and Economic Resilience) Patent Act is actually a stronger version of the STRONG Act.

The goal of the bill is to make it easier and less costly for patent holders to enforce patents. While that would not sound like a partisan issue, the legal pursuit of patents by so-called "trolls" that buy up patents and try to extort payments is an issue that implicates patent enforcement, and the bill has at least on Republican backer.

Sen. Dick Durbin (D-Ill.), one of the bill's supporters, says the legislation manages to thread that needle. “We must preserve and strengthen the ability of legitimate patent holders to protect their innovations, while taking steps to narrowly target and deter abusive patent troll behavior," he said. "This bill strikes that balance.”

Others sponsoring the bill were Senators Chris Coons (D-Del.), Tom Cotton (R- Ark.), and Mazie Hirono (D-Hawaii.).

Among the changes from the STRONG Act introduced in the last Congress are "repetitive, harassing petitions in the administrative reviews at the USPTO, reducing duplication between these reviews and district court, and providing a new approach to amending patent claims during them."

Medical Device manufacturers also saw it as a good compromise.

Mark Leahey, president and CEO of the Medical Device Manufacturers Association (MDMA), issued the following statement regarding introduction of the the act in the U.S. Senate:

“MDMA applauds the bipartisan work of Senators Tom Cotton, Chris Coons, Dick Durbin and Mazie Hirono for devising legislation that thwarts frivolous patent lawsuits while leveling the playing field for inventors," said Leahey. "The ‘STRONGER Patents Act’ provides a balanced, targeted approach to end abuse, support innovation and spur the lifesaving cures and therapies that patients and providers desperately need."