Key Takeaways:

  • The PTO will be applying traditional principles of inventorship to determine if a natural person is an inventor.
  • Practitioners will need to discuss these tenets with inventors so that they understand the parameters for using artificial intelligence (AI) as part of the invention process. 

On February 13, 2024, the USPTO (PTO) published its guidance for inventions made with the assistance of artificial intelligence (AI). The PTO published the guidance in response to the directive it received in the Executive Order on the Safe, Secure, and Trustworthy Development and Use of Artificial Intelligence issued October 20, 2023.

The PTO clarifies how AI-assisted inventions should be classified. It acknowledges recent case authority from the Federal Circuit in Thaler v. Vidal, 43 F.4th 1207 (Fed. Cir. 2022), which held only natural persons can be inventors. The PTO in this guidance details how to address patentability and inventorship when AI has a role in creating an invention.

The Office advises that AI-assisted inventions are not categorically unpatentable, as long as one or more natural persons “significantly contributed” to the invention, referring to the factors in Pannu v. Iolab Corp., 155 F.3d 1344 (Fed. Cir. 1998). The Pannu factors include whether the inventor: (1) contributed in some significant manner to the conception or reduction to practice of the invention; (2) 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; and (3) did more than merely explain to the real inventors well-known concepts and/or the current state of the art.

The Office acknowledges that no bright-line test exists for determining the significance of an inventor's contributions, but it provided the following guidance to consider when applying the Pannu factors with respect to AI-assisted inventions. In doing so, the Office drew from Federal Circuit inventorship jurisprudence and applied tenets from those cases to the AI setting (we broke down the tenets provided by the PTO further for clarity):

  • Using an AI system in creating an invention does not, on its own, negate the user's contributions as an inventor.
  • Recognizing a problem or having a general goal or research plan to pursue alone does not rise to the level of conception.
  • Presenting a problem to an AI system and identifying an invention from the output of the AI system does not constitute inventorship.
  • Constructing a prompt in view of a specific problem to elicit a particular solution from the AI system may demonstrate significant contribution.
  • Reducing an invention to practice alone is not a significant contribution that rises to the level of inventorship.
  • 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. 
  • Conducting a successful experiment using the AI system's output could demonstrate significant contribution to the invention even if the person conducting the experiment is unable to establish conception until the invention has been reduced to practice.
  • Developing an essential building block from which the claimed invention is derived may be a significant contribution to the conception of the claimed invention. This is true even though the person developing the building block was not present for or a participant in each activity that led to the conception of the claimed invention. 
  • A person 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.
  • A person who owns or oversees an AI system that is used to create an invention, without providing a significant contribution to the conception of the invention, is not an inventor.

We expect that the guidance will provide a useful framework for inventors and patent attorneys to determine inventorship in AI-assisted inventions.

The USPTO is seeking public comments on this inventorship guidance and the accompanying examples, and it may issue further guidance or modifications based on the feedback and judicial developments. The USPTO also plans to address other issues at the intersection of AI and IP in the future.

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.