USPTO Provides Guidance on Inventorship for AI-Assisted Inventions

With the proliferation of artificial intelligence (AI) across all fields, from drug manufacturing to search engines, the role of AI in the invention creation process is also rapidly increasing. The question thus arises: “Can AI be an inventor?”

The Federal Circuit held in its decision in Thaler v. Vidal that “only a natural person can be an inventor, so AI cannot be.” 43 F.4th 1207, 1213 (Fed. Cir. 2022), cert denied, 143 S. Ct. 1783 (2023). The court, however, left open the question as to whether an invention made by a human being, with the assistance of AI, is eligible for patent protection.   

On February 13, 2024, the U.S. Patent and Trademark Office (USPTO) issued guidance for navigating this question. The Inventorship Guidance for AI-Assisted Inventions (the “Guidance”) provides a framework to inventors and patent applicants to determine whether an invention made with the assistance of AI is patent eligible, and if so, who should be listed as the inventor. 

Inventorship Standard – Pannu Factors

The Guidance makes it clear that the use of AI to create an invention does not render the invention categorically unpatentable for improper inventorship. Instead, an evaluation should be made as to the contributions made by a natural person to the invention. If a natural person made a significant contribution to the invention, the use of an AI system does not preclude that natural person from qualifying as an inventor.

Whether the natural person made a significant contribution is based on the factors in Pannu v. Iolab Corp., 155 F.3d 1344 (Fed. Cir. 1998) (the “Pannu factors”). Specifically, each named inventor must:

1. contribute in some significant manner to the conception or reduction to practice 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 determination as to whether a natural person contributed to an AI-assisted invention is on a claim-by-claim and case-by-case basis. If there are joint inventors, the Guidance states that there is no requirement that a joint inventor contribute to every claim. However, each claim must have at least one natural person inventor. 

The Guidance provides five guiding principles to help determine whether, using the Pannu factors, a human made a significant contribution to the invention:

1. The use of an AI system by a human to create the AI-assisted invention does not negate the person’s contributions as an inventor.
2. A human who simply recognizes a problem or has a general goal or research plan cannot be deemed to have made a significant contribution to the conception of the invention. For example, a person who merely presents a problem to an AI system may not be a proper inventor of an invention identified from the output of the AI system. However, if the person constructs the prompt in view of a specific problem to elicit a particular solution from the AI system, the person could be deemed to have made a significant contribution to the invention.
3. A human who merely reduces the invention to practice cannot be deemed to have made a significant contribution to the invention. For example, a person who merely recognizes and appreciates the output of an AI system as an invention may not necessarily be an inventor.  However, a person who makes a significant contribution to the output of an AI system after the output is generated to create the invention may be deemed to be a proper inventor.
4. A human who develops an essential building block that is used to derive the invention may be considered to have provided a significant contribution to the conception of the invention. In some situations, a human who designs, builds, or trains an AI system in view of a specific problem to elicit a particular solution is deemed to have made a significant contribution to the invention.  
5. A person simply owning or overseeing an AI system and maintaining “intellectual domination” over the system does not make the person an inventor unless the person has made a significant contribution to the conception of the invention.

Patent Practice Implications

Although the Guidance does not impose any new duties that are owed to the USPTO for AI-assisted inventions, further evaluation and/or action may be needed under existing duties when seeking patent protection for AI-assisted inventions. For example, there already exists a duty to disclose to the USPTO information material to patentability of the invention. This duty may need further consideration for AI-assisted inventions. For example, if there is evidence that a current list of inventors is incorrect due to the lack of substantial contribution by one or more of the listed inventors, such information may need to be disclosed to the USPTO. 

The USPTO already imposes a duty of reasonable inquiry that applies to patent practitioners.  In order to fulfill the duty of reasonable inquiry, the patent practitioner should inquire whether and how the AI is used in the invention creation process, and the contributions made by the humans. If the Examiner at the USPTO has a reasonable basis to conclude that the inventorship information is incorrect, the Examiner may make a request for information regarding inventorship. For example, if there is evidence that suggests that a listed inventor did not significantly contribute to the AI-assisted invention, the Examiner may make a request for information. The patent practitioner will need to respond to such inquiry. If contributions made by a named inventor do not rise to the level of inventorship, steps will need to be taken to correct the inventorship.    

Going forward, it may be desirable for companies that use AI in their innovation process to document the role of a natural person in the conception and reduction to practice of an AI-assisted invention. Having such information may help ensure that the correct person(s) are listed as inventors in a patent application directed to the AI-assisted invention.