The United States Patent and Trademark Office (USPTO) published a Federal Register Notice on Feb. 13, 2024, providing guidance on inventorship for artificial intelligence-assisted inventions. The Guidance applies to all patent applications filed before, on, or after February 13, 2024.
The USPTO also is seeking public comments on the Guidance.
Key Takeaways
- Natural person required: Inventor or joint inventor must be a natural person who made a significant contribution to the conception of the claimed invention.
- Naming AI as inventor is improper: Any application naming an AI system as an inventor will be rejected for improper inventorship.
- AI-assisted inventions are not necessarily unpatentable so long as, for each claim in the application, at least one natural person made a significant contribution to that claim.
- Priority claims to foreign applications naming an AI system as an inventor or joint inventor can be problematic.
Inventors Must Be Natural Persons
The Guidance refers to the definition of “inventor” under 35 U.S.C. § 100(f): “the individual or, if a joint invention, the individuals collectively who invented or discovered the subject matter of the invention.” The Guidance also refers to Thaler v. Vidal, 43 F.4th, 1207 (Fed. Cir., 2022), in which the Federal Circuit interpreted “individual” to mean a human and, therefore, held that AI cannot be a named inventor. The Guidance explains that in view of the statutory definition and the Thaler decision, the USPTO must reject any patent application that names an AI system as inventor, as well as any claim for which the Examiner determines that no natural person contributed to the invention.
AI-Assisted Inventions Are Not Necessarily Unpatentable
The crux of the Guidance is that AI-assisted inventions are not necessarily ineligible if at least one natural person named as an inventor made a significant contribution to the conception of the claimed invention. The Guidance notes that nothing in the Patent Act precludes an inventor from using tools such as AI to help create an invention. However, the person who is named as inventor must have contributed in some significant manner to the invention.
What Is a Significant Contribution?
The USPTO referenced the three-part test provided by the Federal Circuit in Pannu v. Iolab Corp., 155 F.3d 1344, 1351 (Fed. Cir. 1998) to provide some guidance on what qualifies as a significant contribution in the context of AI-assisted inventions. Under the Pannu test, when multiple people created an invention together, an inventor is a person who: “(1) contributed in some significant manner to the conception of the invention; (2) made 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 (3) [contributed] more than merely explain[ing] to the real inventors well-known concepts and/or the current state of the art.” While acknowledging that “there is no bright-line test” for determining inventorship, the Guidance notes that inventorship requires contribution to conception of the invention, “Merely recognizing a problem … or … [r]educing an invention to practice alone Is not a significant contribution that rises to the level of inventorship.”
Examples
The Guidance includes several examples of what is, and what is not, a significant contribution when a human uses an AI tool. They include:
- Merely presenting a problem to an AI system, such as by entering a prompt, is likely not a significant contribution. However, constructing the prompt “in view of a specific problem to elicit a particular solution” may be a significant contribution.
- Merely appreciating or recognizing the output of AI cannot be a significant contribution. However, if the individual made a significant contribution to the output to create an invention, or if the individual conducted an experiment with the output and conceived the invention during the experiment, that may give rise to a significant contribution.
- Developing an “essential building block” of the AI system by designing, building, or training the AI system in view of a particular problem may be a significant contribution. However, merely owning or overseeing the AI system alone is not a significant contribution.
Duty to Disclose
The Guidance states that the duty of disclosure remains the same. The Guidance indicates that this duty includes information that a named inventor did not significantly contribute to a claimed invention because the person’s contribution was made by an AI system.
Benefit and Priority Claims
Priority claims to a foreign application naming an AI inventor as a sole inventor will not be accepted. Priority claims can be made to foreign applications naming one or more natural persons and AI as joint inventors, but the ADS for the U.S. application must only list the natural persons as inventors.
Practical Considerations
The Guidance affects various aspects of patent prosecution. Applicants should consider the following when preparing new patent applications:
- Recordkeeping:Keep a record of any information relating to the extent to which AI was used during the development of an invention.
- Claim Drafting:
- Strategically draft each claim to emphasize elements to which the human inventor contributed. For example, relate the final structure of the AI system to the human coded model.
- Emphasize human contribution to claims by including parameters, features, weights, training sets, etc. that a human provided specifically to modify or improve AI-generated invention output.
- Separately include claims directed to phases of AI system use that require a human developer, such as training.
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