Clarifying AI and inventorship: USPTO's guidance for AI-assisted inventions
The Federal Circuit’s Thaler decision, and the Supreme Court’s subsequent denial of certiorari, established that only a natural person can be an inventor on a patent, meaning artificial intelligence (AI) cannot be.1 The Thaler decision, however, did not address whether inventions made by human beings with the assistance of AI are eligible for patent protection.
In recent months, the United States Patent and Trademark Office (USPTO) has issued new guidance regarding inventorship for AI-assisted inventions that fills this gap left by the Thaler decision. The USPTO's Inventorship Guidance for AI-Assisted Inventions, effective since February 13, 2024, aims to clarify how inventorship will be evaluated moving forward when AI contributes to the creation of an invention. This is a significant issue to have clarified given the increasing use of AI in generating and refining new ideas and solutions. The end of the comment period for the guidance is May 13, 2024. Various stakeholders, including AUTM, have submitted their analyses.
According to the USPTO, existing joint inventorship rules are the framework for addressing AI-assisted inventions. For instance, a human and a generative AI system that were each instrumental in creating an invention can be thought of as co-inventors. Because the generative AI system cannot be listed as an inventor, however, the USPTO indicates that the inventorship question focuses on whether, for each claim of a patent application, at least one natural person has made a “significant contribution” that satisfies the joint inventorship Pannu2 factors required of being an inventor. If not, then the invention cannot be patented because there is no inventor to list.
The Pannu factors require each of the following from a natural person for the natural person to have made a “significant contribution” that rises to the level of inventorship:
- contribute in some significant manner to the conception or reduction to practice of the invention,
- make a contribution to the claimed invention that is not insignificant in quality, when that contribution is measured against the dimension of the full invention, and
- do more than merely explain to the real inventors well-known concepts and/or the current state of the art.
An important note is that the “reduction to practice” element of factor 1 is referenced merely in relation to the doctrine of simultaneous conception and reduction to practice. A natural person reducing to practice an invention created by a generative AI system is not enough to make the natural person an inventor.
Accordingly, the guidance indicates that merely providing a problem to an AI system without further involvement in shaping the solution does not qualify someone as an inventor of the AI system’s output. Similarly, merely recognizing and appreciating the output of an AI system as an invention does not necessarily make one an inventor. Additionally, ownership or oversight of an AI system does not, on its own, make a person an inventor of an invention created through the use of the AI system. Instead, the focus remains on the substantive contribution made by a natural person to the inventive process, regardless of their relationship with the AI technology. The USPTO also provides mechanical and chemical examples for applying these guiding principles.
On the other hand, the guidance explains that “a significant contribution could be shown by the way the person constructs [a] prompt in view of a specific problem to elicit a particular solution from the AI system.” Similarly, a natural person who designs, builds, or trains an AI system in view of a specific problem to elicit a particular solution could be an inventor, where that activity is a significant contribution to the invention created with the AI system.
The USPTO's guidance acknowledges AI’s transformative role in creating potentially-patentable technology while applying foundational patent law principles. The USPTO does make clear that its guidance does not institute a new requirement for disclosing the use of AI in the inventive process. However, the guidance reminds practitioners that their duty of reasonable inquiry pertains to inventorship determinations. “Given the ubiquitous nature of AI,” the guidance states, “this inventorship inquiry could include questions about whether and how AI is being used in the invention creation process.” Asking such questions, and following the guidance, should help avoid inventorship pitfalls.
1 Thaler v. Vidal, 43 F.4th 1207 (Fed. Cir. 2022).
2 Pannu v. Iolab Corp., 155 F.3d 1344, 1351 (Fed. Cir. 1998).