On February 13, 2024, the US Patent and Trademark Office (USPTO) issued updates to prior guidance that was provided for their examiners relating to inventorship for artificial intelligence (AI)–assisted inventions. The updated guidance, entitled “Inventorship Guidance for AI-Assisted Inventions,” which was published according to President Biden’s “Executive Order on the Safe, Secure, and Trustworthy Development and Use of Artificial Intelligence,” provides a preview on how the USPTO will analyze AI issues relating to inventorship. Though the USPTO issued guidance does not have the force and effect of law, it contains the rules the USPTO will use to examine AI-assisted inventions. The updated guidance could necessitate changes in patent portfolio management and, more specifically, impact what a company must do to preserve patent rights when using AI tools in the inventive process.
Human Contributions
First, the updated guidance explains that, while AI-assisted inventions are not “categorically unpatentable,” any inventorship analysis should focus on “human contributions,” as patents function to “incentivize and reward human ingenuity.” In addition, the updated guidance refers to how the US Court of Appeals for the Federal Circuit (CAFC) has made clear that “conception is the touchstone of inventorship.” As conception is performed by the mind, it is an act thought to be performed only by natural persons or human beings.
Even if an AI system were instrumental in the creation of the claimed invention, a natural person who “significantly contributed” to the invention must be named as an inventor on the corresponding patent application. In this regard, the USPTO has issued decisions denying petitions naming AI systems as inventors on patent applications and thus limiting inventorship to a natural person(s). The CAFC in Thaler v. Vidal, cited abundantly in the updated guidance, specifically decided that an AI system cannot be a sole inventor.i
Accordingly, and for AI-assisted inventions, it is important to document the significant contributions made by any natural person. If proper documentation is not made, it could seriously undermine the ability to obtain a valid US patent.
Thaler v. Vidal
Patent applicant Stephen Thaler sought patent protection for an invention entitled “Device for the Autonomous Bootstrapping of Unified Science (DABUS).” Thaler described DABUS as “a collection of source code or programming and a software program.” In 2019, Thaler sought patent protection for two inventions. DABUS was listed as the only inventor on both applications, in which Thaler indicated that “the invention was generated by artificial intelligence.” During prosecution, the USPTO concluded both applications were incomplete and prompted the issuance of a corrective notice requiring Thaler to identify human inventors. Thaler then unsuccessfully petitioned the USPTO to vacate the notices based on his statements of inventorship. The USPTO summarily denied Thaler’s petitions stating that “a machine does not qualify as an inventor.”
Thaler then pursued judicial review under the Administrative Procedure Act (APA), wherein the district court, affirming the CAFC, concluded that an “inventor” under the Patent Act must be a natural person. As noted, the critical issue was whether “an AI software system can be an inventor under the Patent Act.” The court declared that “Congress has determined that only a natural person can be an inventor, so AI cannot be.”
Pannu Factors
In 1998, the CAFC laid out the Pannu factors for assessing whether an inventor is a natural person. In accordance with these factors, each named inventor must:
- Contribute in some significant manner to the conception or reduction to practice of the invention;
- 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;
- Do more than merely explain to the real inventors well-known concepts and/or the current state of the art.
The Pannu factors are traditionally applied to two or more people; however, if a single person uses an AI system, they must also make a significant contribution to invention to be considered an inventor. The typical determination is made on a claim-by-claim and case-by-case basis, realizing that an inventor need only contribute to a single claim of a patent application to qualify as an inventor. The updated guidance indicates there is no bright-line test to determine whether a natural person’s contribution in AI-assisted inventions is significant. However, the updated guidance does set forth a non-exhaustive list of principles that can help inform the application of the Pannu factors in AI-assisted inventions:
- A natural person can be listed as the inventor if they contribute significantly to an AI-assisted invention.
- A natural person who only presents a problem to an AI system is not a proper inventor of an invention identified from the output of the AI system.
- Reducing an invention to practice is not a significant contribution that meets the level of inventorship. However, if a natural person takes the output of an AI system and makes a significant contribution, then they may be an inventor.
- A natural person who develops a building block from which the invention is derived may be considered to have provided a significant contribution even though the person was not present for the activity that led to the claimed invention.
- If a person owns or oversees an AI system without providing significant contribution to the invention, that fact alone does not make them an inventor.
Key Takeaways
- AI is a cutting-edge tool that can be used in connection with the inventive process as long as preventative measures are taken to protect the patentability of an invention.
- Best practices must be followed when using AI tools in connection with the inventive process.
- If AI is used to create an invention and there is no significant contribution from a natural person, then the invention is not eligible for patenting.
- While inventions created solely through the use of AI are not eligible for patenting, they are eligible if a natural person is properly added as an inventor.
- If AI is used in connection with the inventive process, we recommend documenting the significant contributions of a natural person.
- If a natural person takes the output of an AI system and makes a significant contribution related to the output, then the person may be considered an inventor.
If you have any questions regarding the content of this alert, please contact Naresh Kannan, Patents & Prosecution Practice Area co-chair, at nkannan@barclaydamon.com; Amie Mbye, law clerk, at ambye@barclaydamon.com; or a member of the firm’s Patents & Prosecution or Data Security & Technology Practice Areas.
iThaler v. Vidal, 43 F. 4th 1207, 1209 (Fed Cir. 2022).