USPTO Issues Guidance about Inventorship of AI-assisted Inventions

By Aaron Gin and Michael Borella --

On February 12, 2024, the U.S. Patent and Trademark Office released detailed guidance regarding inventorship of inventions created with the assistance of artificial intelligence (AI).  The guidance, signed by Kathi Vidal, Under Secretary of Commerce for Intellectual Property and Director of the USPTO, is scheduled to be published in the Federal Register on February 13, 2024.  The guidance focuses on how inventorship should be determined in U.S. patents and patent applications when AI, including generative AI, plays a role in the conception and/or reduction to practice of a given invention.

The 27-page document demonstrates the Patent Office's effort to navigate the challenges AI poses to traditional notions of inventorship and creativity, and comes in response to AI-specific requests for public comment, public listening sessions, and President Joe Biden's "Executive Order on the Safe, Secure, and Trustworthy Development and Use of Artificial Intelligence."

At the heart of the USPTO's guidance is the principle that AI systems, even when they have a role in facilitating or contributing to the creation of inventions, cannot themselves be named as inventors on patent applications.  Instead, only natural persons—humans—are capable of inventing under U.S. law, consistent with Thaler v. Vidal, 43 F.4th 1207 (Fed. Cir. 2022).  Thaler makes clear that "the AI system's contribution is not inventorship, even if the AI system's contributions were instrumental in the creation of the invention."  Id.

Accordingly, the guidance firmly states that inventors as well as joint inventors named on U.S. patents and patent applications must be natural persons.  Specifically, the guidance provides that "based on the holding in Thaler that an 'individual' must mean a natural person, it is clear that a 'joint inventor' or 'coinventor' must also be a natural person."  Furthermore, patent applications that name a machine (e.g., an AI) on an Application Data Sheet, an inventor's oath or declaration, or a substitute statement as either an inventor or a joint inventor will be considered to have improper inventorship.

Interestingly, the guidance acknowledges that AI systems could perform acts that, if performed by a human, could constitute inventorship under existing U.S. patent law.  Furthermore, in the scenario where an AI could otherwise be considered an inventor, the inability to list the AI as an inventor or joint inventor does not inherently render the invention unpatentable.

Detailed principles and examples are provided to assist in determining when a human's contribution to an AI-assisted invention is significant enough to warrant inventorship.  Namely, the guidance reiterates the factors of Pannu v. Iolab Corp., 155 F.3d 1344 (Fed. Cir. 1998), which include that each inventor must:

(1) contribute in some significant manner to the conception of the invention;

(2) 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

(3) do more than merely explain to the real inventors well-known concepts and/or the current state of the art.

The guidance also delves into the public policy of the U.S. patent system.  Specifically, it outlines the importance of a human contribution in the innovation process, because "the patent system is designed to encourage human ingenuity," citing the IP Clause of the Constitution and the legislative history of the 1952 Patent Act ("Inventions eligible for patenting 'include anything under the sun made by man.'") Graham v. John Deere Co., 383 U.S. 1, 9 (1966).

The USPTO highlights some "guiding principles" in determining AI-assisted inventorship, which include:

(1) A natural person's use of an AI system in creating an AI-assisted invention does not negate the person's contributions as an inventor.  Rather, the natural person can be listed as the inventor or joint inventor if the natural person contributes significantly to the AI-assisted invention;

(2) Merely recognizing a problem or having a general goal or research plan to pursue does not rise to the level of conception.  A natural person who only presents a problem to an AI system may not be a proper inventor or joint inventor of an invention identified from the output of the AI system.  However, a significant contribution could be shown by the way the person constructs the prompt in view of a specific problem to elicit a particular solution from the AI system;

(3) Reducing an invention to practice alone is not a significant contribution that rises to the level of inventorship.  Therefore, a natural person who merely recognizes and appreciates the output of an AI system as an invention, particularly when the properties and utility of the output are apparent to those of ordinary skill, is not necessarily an inventor.  However, a person who takes the output of an AI system and makes a significant contribution to the output to create an invention may be a proper inventor.  Alternatively, in certain situations, a person who conducts a successful experiment using the AI system's output could demonstrate that the person provided a significant contribution to the invention even if that person is unable to establish conception until the invention has been reduced to practice;

(4) A natural person who develops an essential building block from which the claimed invention is derived may be considered to have provided a significant contribution to the conception of the claimed invention even though the person was not present for or a participant in each activity that led to the conception of the claimed invention.  In some situations, the natural person(s) who designs, builds, or trains an AI system in view of a specific problem to elicit a particular solution could be an inventor, where the designing, building, or training of the AI system is a significant contribution to the invention created with the AI system; and

(5) Maintaining "intellectual domination" over an AI system does not, on its own, make a person an inventor of any inventions created through the use of the AI system.  Therefore, a person simply owning or overseeing an AI system that is used in the creation of an invention, without providing a significant contribution to the conception of the invention, does not make that person an inventor.

The guidance applies to utility patents, plant patents, design patents, and corresponding applications.

The guidance also states that the duty of disclosure and the duty of reasonable inquiry both apply to the question of proper inventorship.  This will incentivize inventors and their representatives to be forthcoming about the contributions that humans and/or AI systems may have had with respect to the conception of inventions.  Moreover, the guidance notes that examiners and other USPTO employees may make requests for information regarding inventorship when such an individual "has a reasonable basis to conclude that one or more named inventors may not have contributed significantly to the claimed subject matter."

Nonetheless, further rounds of USPTO guidance may be released "as appropriate."  These may discuss the impact of AI on other aspects of patent practice, including subject matter eligibility, obviousness, and enablement.

By emphasizing human contribution and providing specific principles and examples, the guidance gives the clearest picture yet available from the USPTO regarding its policies and practices at the intersection between AI and inventorship.

For additional information, please see:

• Unpublished Version of USPTO Inventorship Guidance
• Executive Order on the Safe, Secure, and Trustworthy Development and Use of Artificial Intelligence

Comments

[skeptical]

Can one HAVE a "joint-inventor" with an AI, does it even make sense to BE such?

If, per Thaler, the other "joint-inventor" cannot be presented, AND there is still a requirement TO present ALL joint-inventors, one is stuck in a tautology that ANY patent so processed is fatally constructed.

[skeptical]

Further to that fatal construction, there are two additional wrinkles:

First is the requirement to report by way of IDS that which was generated by an AI.

This itself has multiple wrinkles.

We face (as I have pointed out) the dichotomy of whether or not AI CAN "invent."

If the answer is "no," then it must be taken that ALL of what AI presents must be understood to be nothing more than what exists in the prior art. This of course has an immediate "another" impact as to what does that other legal fiction that represents State of the Art mean: Person Having Ordinary Skill In The Art.

If the answer is "yes," then per Thaler, THAT portion cannot be captured in a claim, as all inventive elements of a claim must be reflected by both the list of inventors - and those inventors must swear or affirm the contents. This is of course the NECESSARY result that only a human's inchoate property may become a bundle of sticks of personal property through the patent process (in a corollary, even though a photograph objectively exists, there is NO copyright for the Simian Selfie).

There is NO 'getting around this' as the Office may want to hint at, because the Office is NOT the body that actually sets governing law.

We have seen this repeatedly over the last decade in view of examples under 101 that the courts have turned around and flat out rejected.

The second wrinkle is that ALL practitioners are now ON NOTICE that AI elements must be separated out.

And yes - those Pharma executives that testified before Congress last year that you were already actively using generative AI to distinguish inventive matter, this means you and your practitioners.

[skeptical]

Further - these items were put on the table for discussion YEARS ago now - when the DABUS case first came out.

Naysayers gonna say nay.