Law \ Legal

The Manner in Which the Invention was Made

by Dennis Crouch

T0day’s oral arguments in Thaler v. Vidal was not too exciting. Court focused on the terms “individual” that was added to the Patent Act during the AIA and likely determinatively ends the case:

The term “inventor” means the individual or, if a joint invention, the individuals collectively who invented or discovered the subject matter of the invention.

35 U.S.C. s100(f).  I am close to 100% sure that the Federal Circuit will affirm that US law requires the patentee to identify a human inventor.

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In the course of oral arguments, the government made two odd claims, neither of which were fully developed.

The first relates to the final sentence of Section 103 indicating that “patentability shall not be negated by the manner in which the invention was made.”  The Gov’t . made the following claim:

The Supreme Court in Graham against John Deere [more than] 50 years ago said that provision, that one sentence, applies only to the part of patentability that is referenced in Section 103.

Thaler Oral Arguments. In Graham, the Court did comment on the phrase and its  Congressionally intended purpose of overruling the flash-of-genius test.  However, I don’t see that the court bound the phrase to only be tied to Section 103 and obviousness.  The court wrote:

It also seems apparent that Congress intended by the last sentence of § 103 to abolish the test it believed this Court announced in the controversial phrase “flash of creative genius,” used in Cuno Engineering Corp. v. Automatic Devices Corp., 314 U. S. 84 (1941).

Graham v. John Deere Co., 383 U.S. 1 (1966).  Although the Graham court found a seemingly apparent Congressional intent, it did not actually interpret the provision as so limited and certainly did not indicate that it should be limited to application only in the context of obviousness analysis.

The second odd claim made by the gov’t in oral arguments is as follows: “One person’s innovation is another person’s step backwards.”  The basic underlying idea  here is apparently that Congress intended to intentionally exclude certain AI-generated inventions from patentability because they thought those innovations would have a negative societal impact.

The full oral arguments should be available shortly at this link: https://cafc.uscourts.gov/home/oral-argument/listen-to-oral-arguments/.



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