Page:Thaler v. Hirshfeld.pdf/5

 assigned all intellectual property rights in the claimed invention to plaintiff. That document, entitled “Assignment,” provided in pertinent part: "DABUS, the Creativity machine that has produced the below-detailed invention, as the sole inventor (represented in this assignment by its owner, Stephen L. Thaler, hereinafter called the “Assignor”), hereby assigns and transfers to:

(hereinafter called the “Assignee”), its successors, assignees, nominees, or other legal representatives, the Assignor’s entire right, title, and interest, including, but not limited to, copyrights, trade secrets, trademarks and associated good will and patent rights in the Invention and the registrations to the invention …

…

In view of the fact that the sole inventor is a Creativity Machine, with no legal personality or capability to execute said agreement, and in view of the fact that the assignee is the owner of said Creativity Machine, this Assignment is considered enforceable without an explicit execution by the inventor. Rather, the owner of DABUS, the Creativity Machine, is signing this Assignment on its behalf.

Similarly, DABUS, being a machine and having no legal personality, does not have the capability to receive any consideration, and therefore, Stephen L. Thaler, as its owner/representative, acknowledges the receipt and sufficiency of good and valuable consideration for this assignment."

AR 21; 310. The assignment document was signed by both “Stephen L. Thaler, On Behalf of DABUS, Assignor,” as well as “Stephen L. Thaler, Assignee.”

After its initial review of the Applications, the USPTO issued plaintiff a “Notice to File Missing Parts of Non-Provisional Application,” allowing him two months to submit proper information regarding inventorship because the “application data sheet or inventor’s oath or declaration does not identify each inventor or his or her legal name.” AR 97–98; 380–81. On August 29, 2019, plaintiff filed a petition with the USPTO Director pursuant to 37 C.F.R. § 1.181 in which he asked the USPTO to vacate its “Notice to File Missing Parts,” and essentially reiterated the “Inventorship Statement” that he had submitted with the Applications arguing that DABUS should be listed as the inventor. AR 111–16; 394–99. On December 17, 2019, the USPTO issued a written decision dismissing plaintiff’s petition, in which it explained that the explicit statutory language that Congress has used to define the term “inventor”—e.g., “individual” and “himself or herself”—was uniquely trained on human beings. AR 131–33; 410–12. The USPTO also explained that the Federal Circuit had twice held that an inventor could only be a natural person. (quoting, 734 F.3d 1315, 1323 (Fed. Cir. 2013) (“”);, 990 F.2d 1237, 1248 (Fed. Cir. 1993)). “Because a machine does not qualify as an inventor,” the USPTO concluded that it had “properly issued the Notice … noting the inventor was not identified by his or her legal name.” The USPTO further explained the way for plaintiff to patent the inventions: