Artificial intelligence (AI) enables computers and machines to think like humans and perform complex tasks traditionally associated with human intelligence, such as making decisions, reasoning, recognizing patterns, and solving problems. Empowering the development of various things such as self-driving cars, chatbots, and virtual personal assistants, AI is rapidly becoming ubiquitous and changing many aspects of our lives.
As AI continues to drive emerging technologies across almost every industry, questions emerge regarding whom to credit as the inventor and what inventions can be protected by patent rights when AI is involved in their creation. Clarity surrounding the patent rights of inventors and AI-generated inventions is critical because patents are an important tool for protecting intellectual property and promoting innovation.
On February 13, 2024, the U.S. Patent and Trademark Office (USPTO) published Inventorship Guidance for AI-Assisted Inventions to shed light on questions in this evolving area. Effective immediately, the guidance provides inventors and patent applicants with a framework for AI-assisted inventions and how these inventions will be assessed at the USPTO.
Here is a summary of what the current version of the guidance provides.
Human inventorship requirement
The most notable takeaway from the USPTO guidance is that the human inventorship requirement remains solidly in effect. The USPTO stresses the need to protect and promote inventions by humans, even if these inventions were aided by AI. Therefore, inventions created entirely by AI are still unpatentable, and only humans, or “natural persons” as implied by the Patent Act, may be named inventors on patent applications.
However, AI-assisted inventions are not categorically unpatentable. Inventions created jointly between at least one natural person and AI may be patented, but only the natural person(s) may be named as inventor(s) on the patent application.
The USPTO guidance is consistent with the Federal Circuit’s decision in Thaler v. Vidal, which held that an AI machine cannot be an inventor because an inventor must be a natural person. The ruling affirmed the USPTO’s denial of two patent applications that had listed an AI machine as the inventor.
“Significant contribution” requirement
The USPTO guidance states that a human is considered an inventor of an AI-assisted invention if that human provided a “significant contribution” to the invention’s conception. Although there is no bright-line test for whether a contribution is significant, the USPTO outlines several guiding principles to consider in determining whether a natural person’s contribution to an AI-assisted invention is significant. The guidance further notes that the significant contribution determination turns on the particular facts and is therefore made on a case-by-case basis.
Historically, this significant contribution requirement applied in cases involving joint inventorship, where two or more natural persons contributed to the invention. This concept is now extended to apply to cases where a human who meets the significant contribution requirement may be the sole inventor of an invention assisted by AI.
Duty of disclosure
Tracking inventorship and ensuring that a human inventor significantly contributed to the invention will be important moving forward for AI-assisted inventions. While at this time the USPTO does not require affirmative disclosure that AI contributed to an invention, patent applicants and others associated with prosecuting a patent application have a broader duty of disclosure whereby they must disclose any known information that is “material to patentability,” which includes a duty to disclose information related to improper inventorship. To prevent a patent application from being rejected, applicants must ensure that all information relating to inventorship is correct. Incorrect inventorship is grounds for rejection of a patent by the USPTO.
Duty of reasonable inquiry
Under the existing duty of reasonable inquiry, patent practitioners may need to inquire about proper inventorship if on notice of facts suggesting such a need. The USPTO guidance notes that this inquiry into inventorship could include questions about whether and how AI is being used in the invention creation process, including an assessment of the contributions made by natural persons.
Naming inventors, correcting inventorship errors, and handling assignments
The USPTO guidance states that prior requirements regarding naming and correcting inventorship also apply to AI-assisted inventions. In cases where no natural person significantly contributed to the invention and where inventorship cannot be corrected, the claim must be canceled or amended.
Following existing requirements, if there is a reasonable basis to conclude that one or more named inventors may not have contributed significantly to the claimed invention, the examiner or other USPTO employee may request additional inventorship information even if the information is not material to patentability.
Generally, the original applicant is presumed to be the owner of the patent application and may choose to make an assignment in which his or her ownership, interest, and rights in the property are transferred to another person. However, assignments from AI systems should not be recorded with the USPTO because an AI system cannot be a named inventor, and therefore has no rights to assign.
Design and plant patent applications
The USPTO guidance clarifies that the same principles of inventorship, including a natural person’s active and significant contribution to the conception and development of an AI-assisted invention, apply to design and plant patents as they do to utility patents. The guidance also contains examples to assist the public and patent examiners. The USPTO noted that the development of guidance for AI-assisted inventions is an ongoing process and may be updated in the future.
Where to get answers to pressing questions about patent law
Other than the USPTO’s guidance, no legislation expressly addresses the role of AI in the development of patentable inventions. Although the present guidance does not have the force of law, it sets out the USPTO’s policy regarding inventorship requirements and will be used by patent examiners going forward. The USPTO also added examples on its AI resource page for two AI-assisted inventions: a transaxle for a remote car and a therapeutic compound for treating cancer
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