The USPTO released inventorship guidance on February 12, 2024, for inventions assisted by artificial intelligence (AI). The Federal Circuit previously held that an AI system cannot be listed as an inventor in Thaler v. Vidal, 43 F.4th 1207 (Fed. Cir. 2022), and this release provides guidance regarding the open question of human inventorship for inventions developed by a person working with the assistance of an AI system.

At the outset, the USPTO guidance states that inventions developed with assistance from an AI system are still patentable, as long as a human inventor "significantly contributed" to the invention. The guidance also notes that even though patentability may be allowed even where the AI system is "instrumental" in the creation of the claimed invention, the requirement for a significant contribution from a human inventor applies to each and every claim of the patent application.

This leads to the follow up question of what exactly qualifies as a "significant contribution" from a human inventor, and the USPTO has provided some helpful examples based on existing case law for joint human inventorship, known as the Pannu factors (from Pannu v. Iolab Corp., 155 F.3d 1344 (Fed. Cir. 1998)). The USTPO examples can generally be grouped into some situations where the human contribution is significant enough to allow for patentability, and other situations where the only significant contribution to the invention comes from the AI system and it would not be proper to name a human inventor.

Examples of insufficient human contribution include:

  • Only presenting a problem to an AI system, where the AI system generates a solution on its own.
  • Merely recognizing and appreciating the output of an AI system, without any further modification or development.
  • Simply owning or overseeing an AI system used in the creation of an invention.

Examples of significant contribution by a human inventor include:

  • A person constructing a prompt for the AI system in view of a specific problem, to elicit a particular solution from the system.
  • A person who designs, builds, or trains the AI system in view of a specific problem to elicit a particular solution.
  • A person who takes the output of an AI system and further develops or modifies the output in a significant way to create the invention.

While some ambiguity surely remains regarding what is a "significant contribution" by a human inventor, Applicants and patent practitioners should not be discouraged from filing applications for inventions based on AI technologies. In connection with filing, however, it is suggested to provide explanation in the application as to specialization and/or integration of what might be generic AI into a specific, technical solution consistent with the above, as a basis to argue the significant contributions from the human inventor to the claimed subject matter.

The content of this article is intended to provide a general guide to the subject matter. Specialist advice should be sought about your specific circumstances.