Legal Alert: USPTO Says AI-Assisted Inventions Not Categorically Unpatentable in New Guidance

Is an invention developed with the assistance of artificial intelligence (AI) patentable? On February 13, the United States Patent and Trademark Office (USPTO) issued guidance that helps to answer this question while also incentivizing, protecting, and encouraging investment in innovations made possible through the use of AI.

The guidance delivers on the Office’s obligations under President Biden’s October 2023 Executive Order on the Safe, Secure, and Trustworthy Development of Artificial Intelligence. According to Director Vidal, the guidance attempts to strike a balance between awarding patent protection to promote human ingenuity and investment for AI-assisted inventions while not unnecessarily locking up innovation for future developments.

Highlights of the AI inventorship guidance

• AI-assisted inventions are not categorically unpatentable; patent protection may be sought for inventions in which a natural person provided a significant contribution to the invention.
• Provides instructions to examiners and stakeholders on how to determine whether the human contribution to an innovation is significant enough to qualify for a patent when AI also contributed.
• Provides instructions to examiners and applicants on determining the correct inventor(s) to be named in a patent or patent application for inventions created by humans with the assistance of one or more AI systems.

Digging deeper

AI-assisted inventions not categorically unpatentable

In Thaler v. Vidal, 43 F.4th 1207 (Fed. Cir. 2022), the Federal Circuit held that “only a natural person can be an inventor, so AI cannot be,” siding with the USPTO in its decision to deny petitions to name an AI system (“DABUS”) as an inventor on two patent applications. Based on Thaler, the guidance states that only natural persons may be inventors, joint inventors, or coinventors. Any patent application that names a machine on an application data sheet, inventor’s oath or declaration, or a substitute statement as either an inventor or joint inventor will be considered to have improper inventorship. While AI systems cannot be named as inventors on patent applications, the use of an AI system by a natural person does not preclude that natural person from qualifying as an inventor if that natural person “significantly contributed” to the claimed invention.

Determination of “significant contribution”

Where two or more persons shared in the conception of an invention (e.g., joint inventorship scenarios), each person must have made a “significant contribution” to the claimed invention to be named as an inventor on the patent application. In determining whether an inventor’s contribution is significant, courts consider whether each inventor:

• Contributed in some significant manner to the conception or reduction to practice of the invention
• 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
• Did more than merely explain to the real inventors well-known concepts and/or the current state of the art

Pannu v. Iolab Corp., 155 F.3d 1344, 1351 (Fed. Cir. 1998).

Failure to meet any of the Pannu factors precludes a person from being named an inventor. While the first Pannu factor refers to conception or reduction to practice, contribution to the reduction to practice of an invention conceived by another is insufficient to establish inventorship. For inventorship to be proper, a named inventor must have conceived of the invention and then reduced it to practice or conceived and reduced it to practice simultaneously (e.g., establishing conception by pointing to reduction to practice through an unexpectedly successful experiment).

Although the Pannu factors have traditionally been applied to two or more natural persons who create an invention, the guidance indicates that a single natural person who uses an AI system to create an invention is also required to make a significant contribution to the invention under Pannu to be considered a proper inventor. In the event of a single person using an AI system to create an invention, that single person must make a significant contribution to every claim in the patent or patent application. Inventorship is improper if at least one natural person did not significantly contribute to the claimed invention, even if the application or patent includes other claims invented by at least one natural person. Accordingly, the guidance directs examiners and other USPTO personnel to reject under 35 U.S.C. Section 101 or 115 any claim for which the examiner or other USPTO employee determines that at least one natural person did not significantly contribute.

Determination of proper inventor(s)

The guidance acknowledges that determining whether a natural person’s contribution to an AI-assisted invention is significant enough to make that person an inventor is difficult to ascertain and that there is no bright-line rule. To assist applicants and USPTO personnel, the guidance provides the following non-exhaustive principles that can help inform the application of the Pannu factors to AI-assisted inventions:

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. 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.
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.

Implications for applicants and practitioners

Duties owed to the USPTO

The guidance does not impose any additional duties upon applicants; however, it reminds them of the applicability of their existing duties of disclosure and reasonable inquiry to inventorship determinations. Because improper inventorship is a ground of rejection under §§ 101 and 115, applicants should disclose information that establishes a prima facie case of unpatentability due to improper inventorship — including information that demonstrates that a named inventor did not significantly contribute to an AI-assisted invention. Due to the ubiquity of AI, practitioners should conduct a reasonable inquiry into whether and how AI was used in the invention process, including assessing whether the contributions made by natural persons are significant enough to establish inventorship.

Naming inventors

As noted above, natural persons must significantly contribute to every claim of an AI-assisted invention for inventorship to be proper. This stands in contrast to the rules for human joint inventors, in which a contribution to a single claim is sufficient to be named an inventor. While the guidance notes that the traditional rules regarding corrections to inventorship continue to apply, in cases where inventorship with respect to a particular claim cannot be corrected — such as where no natural person significantly contributed to it — the claim must be canceled or amended.

Litigating inventorship

During litigation, patent owners can expect increased scrutiny of inventorship with respect to use of AI. For example, discovery around use of AI in conception of the invention should be expected, which will include both document requests directed to AI tool prompts and output, along with inventor depositions on this topic. Duty-of-disclosure discovery should also be expected on this topic. Applicants should consider in-house training of engineers, researchers, and other potential inventors on the use of AI and its implications on inventorship. Applicants should also consider documenting whether AI was used in the invention process and, if so, how.

On the flip side, defendants have a new and potentially fruitful reason to explore inventorship issues in litigation. As noted above, there is no bright-line rule or other test to determine “substantial contribution.” As such, where it can be shown that inventors used AI tools as a part of their inventing process, wise defendants will explore that use in detail and, where justified, defend against infringement allegations by arguing the asserted claim is invalid for improper inventorship.