USPTO Issues Inventorship Guidance for AI-Assisted Inventions | Practical Law

USPTO Issues Inventorship Guidance for AI-Assisted Inventions | Practical Law

On February 13, 2024, the US Patent and Trademark Office (USPTO) issued inventorship guidance for determining whether a natural person's contribution to an AI-assisted invention is significant enough to be patentable.

USPTO Issues Inventorship Guidance for AI-Assisted Inventions

Practical Law Legal Update w-042-3208 (Approx. 5 pages)

USPTO Issues Inventorship Guidance for AI-Assisted Inventions

by Practical Law Intellectual Property & Technology
Published on 13 Feb 2024USA (National/Federal)
On February 13, 2024, the US Patent and Trademark Office (USPTO) issued inventorship guidance for determining whether a natural person's contribution to an AI-assisted invention is significant enough to be patentable.
On February 13, 2024, pursuant to President Biden's Executive Order on Safe, Secure, and Trustworthy Artificial Intelligence, the USPTO issued "Inventorship Guidance for AI-Assisted Inventions," providing instructions on how to determine whether human contribution to an invention assisted by artificial intelligence (AI) is significant enough to be patentable (89 Fed. Reg. 10043 (Feb. 13, 2024)).
The new inventorship guidance:
  • Explains the impact of Thaler v. Vidal (43 F.4th 1207 (Fed. Cir. 2022)) on AI-assisted inventions, particularly that:
    • only natural persons qualify as "inventors" under US patent law;
    • because AI systems are not natural persons, US patents and patent applications may not name AI systems as inventors or joint inventors even if an AI system was instrumental to creation of the claimed invention; and
    • a natural person's use of an AI system as a tool during the inventive process does not preclude that person from qualifying as an inventor or a joint inventor if that person significantly contributed to the claimed invention.
  • Directs patents and patent applications for AI-assisted inventions to name a natural person who "significantly contributed" to the invention within the meaning of the so-called "Pannu factors," meaning a natural person who:
    • contributed in some significant manner to the invention's conception or reduction to practice;
    • made some contribution to the claimed invention that is not insignificant in quality, measuring that contribution against the dimension of the full invention; and
    • did more than merely explain to the real inventors well-known concepts or the current state of the art.
The inventorship guidance rejected bright-line tests and instead offered a non-exhaustive list of principles to help guide the potentially difficult application of the Pannu factors to AI-assisted inventions, including that:
  • Use of an AI system during the inventive process does not negate a natural person's contributions as an inventor if that person contributes significantly to creation of the AI-assisted invention.
  • To rise to the level of conception, a natural person should:
    • go beyond merely recognizing a problem, having a general goal or research plan, or simply providing a problem to the AI system; and
    • instead, use the specific problem to construct a prompt to the AI system to elicit a particular solution.
  • A natural person's reduction to practice may qualify as a significant contribution to conception of an AI-assisted invention if that person:
    • goes beyond merely recognizing and appreciating the significance of the AI system's output (particularly where that significance would be apparent to persons of ordinary skill in the art); and
    • either makes a significant contribution to the AI's output or conducts a successful experiment using that output.
  • In certain circumstances, a natural person who designs, builds, or trains an AI system in light of a specific problem to elicit a particular solution may be considered an inventor if the designing, building, or training of the AI system is a significant contribution to the invention created using the AI system.
  • A natural person who merely owns, oversees, or maintains "intellectual domination" over an AI system used to create an invention is not an inventor without providing a significant contribution to the invention's conception.
The USPTO's AI-related resources webpage provides two hypotheticals applying this inventorship guidance ("Transaxle for Remote Control Car" and "Developing a Therapeutic Compound for Treating Cancer").
The guidance also discusses how inventorship determination for AI-assisted inventions impacts other aspects of patent practice, including that:
  • The inventorship guidance for AI-assisted inventions applies to utility, design, and plant patents and patent applications.
  • 37 C.F.R. § 1.56's duty of candor extends to information raising a prima facia case of unpatentability due to improper inventorship (such as information showing that a named inventor did not significantly contribute to an AI-assisted invention).
  • Given AI's increasing ubiquity, 37 C.F.R. § 11.18(b)(2)'s duty of reasonable inquiry under the circumstances may include:
    • inquiring whether and how AI was used during the inventive process; and
    • assessing whether each natural person's contributions rise to the level of inventorship.
  • The statutory and regulatory requirements for naming correct inventors may require:
    • correction of inventorship where a particular person's contributions to an AI-assisted invention are not significant enough to rise to the level of inventorship; and
    • claim cancellation or amendment if inventorship cannot be corrected because no natural person significantly contributed to the AI-assisted invention.
  • USPTO personnel may request information from applicants regarding inventorship if they have a reasonable basis to conclude that a named inventor may not have significantly contributed to a claimed invention.
  • Because AI systems cannot be inventors under US law, applicants should not submit an oath, declaration, or substitute statement on behalf of an AI system, even if that AI system contributed to one or more claims in the application.
  • US patent applicants seeking to claim priority to foreign applications:
    • may not claim priority to a foreign application naming an AI system as the sole inventor;
    • may claim priority to a foreign application naming a non-natural person as a joint inventor if the US application's data sheet lists only the natural persons who significantly contributed to the invention, including one natural person in common with the foreign application; and
    • can comply with US inventorship requirements for applications entering the national stage under 35 U.S.C. § 371 by naming a natural person who significantly contributed to an AI-assisted invention in the data sheet accompanying the initial Section 371 submission.
The USPTO is accepting public comments until May 13, 2024 regarding both the inventorship guidance and the two hypotheticals applying the guidance. Instructions for submitting comments through the Federal eRulemaking Portal (www.regulations.gov) are included in the guidance.