Cite as 558 F.Supp.3d 238 (E.D.Va. 2021)
istrative Record (“AR”) 1–96; 284–379. In his one-count complaint brought under the Administrative Procedure Act (“APA”), plaintiff alleges that the refusal of defendants Andrew Hirshfeld and the USPTO (collectively “defendants”) to process the Applications was “arbitrary, capricious, an abuse of discretion and not in accordance with the law; unsupported by substantial evidence, and in excess of Defendants’ statutory authority.” [Dkt. No. 1] ¶ 70. Plaintiff seeks an order compelling defendants to reinstate the Applications and vacate the prior decision on plaintiff’s petitions filed under 37 C.F.R. § 1.181. He also seeks “[a] declaration that a patent application for an AI-generated invention should not be rejected on the basis that no natural person is identified as an inventor”; “[a] declaration that a patent application for an AI-generated invention should list an AI where the AI has met inventorship criteria”; and an award of the costs and reasonable attorneys’ fees plaintiff incurred in this litigation. [Dkt. No 1] ¶¶ A–E.
As a civil action brought under the APA, review of the final agency action is limited to considering the administrative record. The factual assertions made by plaintiff during the application process are taken as true. Plaintiff alleges that he “is in the business of developing and applying advanced artificial intelligence (AI) systems that are capable of generating patentable output under conditions in which no natural person traditionally meets inventorship criteria,” [Dkt. No. 1] ¶ 1, and is the owner of DABUS,[1] an artificial intelligence machine listed as the inventor of the ’350 application, which claimed a “light beacon that flashes in a new and inventive manner to attract attention (‘Neural Flame’),” and the ’532 application, which claimed a “beverage container based on fractal geometry (‘Fractal Container’).” Id. ¶ 15.
In the Application Data Sheets accompanying the Applications, plaintiff identified the inventor’s “given name” as “DABUS,” and under “family name” wrote “Invention generated by artificial intelligence,” identifying his own mailing address as the “mailing address of inventor.” AR 10; 299. Plaintiff also included a “Statement on Inventorship” in the Applications explaining that “[t]he unique aspects under which the instant invention was conceived prompted the inclusion of such statement in order to explain that the inventor of the subject matter of the instant invention of the present application is an AI machine, being a type of ‘creativity machine’ named ‘DABUS,’ ” and arguing why plaintiff thought DABUS should be considered an “inventor” under the Patent Act and the USPTO’s regulations. AR 60–65; 345–50.
Because DABUS could not execute the necessary oath or declaration that the Patent Act requires of an inventor, plaintiff included with the Applications a “Substitute Statement Under 37 CFR 1.64 in Lieu of Declaration Under 35 USC § 115(d),” which explained that the “inventor,” DABUS, was “under legal incapacity in view of the fact that the sole inventor is a Creativity Machine (i.e., an artificial intelligence), with no legal personality or capability to execute this substitute statement.” AR 26–27; 311–12. Accordingly, Thaler, as the “the Applicant and the Assignor of the abovementioned application, as well as the owner of said Creativity Machine, DABUS” signed the substitute statement. Id.
The Applications also included a document through which DABUS had ostensi-
- ↑ “DABUS” is an acronym for “Device for the Autonomous Bootstrapping of Unified Sentience.” [Dkt. No. 19] at 1.
