Last year, the USPTO ruled that an artificial intelligence (AI) cannot be listed as an inventor on a patent application. See USPTO Says AI Machine Cannot Qualify as an Inventor (e.g., “Robert Bahr, Deputy Commissioner for Patent Examination Policy, notes that the patent statutes preclude construing “inventor” to cover machines because Title 35 of the United States Code consistently refers to inventors at natural persons.”). That ruling, however, left open the question of the circumstances under which a natural person using an AI to create something new can be listed as an inventor of the AI-assisted creation. Now, the USPTO has issued guidance directly addressing this issue – as it was directed to do so by the “Executive Order on the Safe, Secure, and Trustworthy Development and Use of Artificial Intelligence” (October 30, 2023).

The ultimate conclusion of the USPTO’s guidance is that, for the person using an AI to be listed as an inventor, the person must provide “a significant contribution to the [AI-assisted] invention.” See “Inventorship Guidance for AI-assisted Inventions,” PTO-P-2023-0043, available at https://www.federalregister.gov/documents/2024/02/13/2024-02623/inventorship-guidance-for-ai-assisted-inventions (the Guidance) (emphasis added). The USPTO came to this conclusion by reasoning that “patents function to incentivize and reward human ingenuity.” Id (emphasis added). In short, the Guidance explains that “while AI-assisted inventions are not categorically unpatentable, the inventorship analysis should focus on human contributions.”

The Guidance is divided into five sections. Section I provides background information. Section II provides an overview of joint inventorship under the recent Thaler v. Vidal decision from the Federal Circuit. Section III covers AI-assisted inventions, concluding that they should be permissible where a human makes a significant contribution. Section IV provides guidance for determining inventorship of AI-assisted inventions. Section V explains the impact the inventorship determination has on other aspects of patent practice. These sections are discussed briefly below.

Section I. Background

The USPTO issued a request for public comments on patenting AI-assisted inventions in August 2019. See Request for Comments on Patenting Artificial Intelligence Inventions, 84 FR 44889 (August 27, 2019). In October 2020, the USPTO published a report on the public comments.  See www.uspto.gov/sites/default/files/documents/USPTO_AI-Report_2020-10-07.pdf. Later, in June 2022, the USPTO held its inaugural Artificial Intelligence/Emerging Technologies Partnership meeting, which included a panel discussion on “Inventorship and the Advent of Machine Generated Inventions.” Following this, the USPTO issued a “Request for Comments Regarding Artificial Intelligence and Inventorship” (RFC) on February 14, 2023. See 88 FR 9492 (February 14, 2023).

On October 30, 2023, President Biden issued the “Executive Order on the Safe, Secure, and Trustworthy Development and Use of Artificial Intelligence.” The order sets forth various policies and principles. The order requires, “[t]o promote innovation and clarify issues related to AI and inventorship of patentable subject matter,” the USPTO Director shall “within 120 days of the date of this order, publish guidance to USPTO patent examiners and applicants addressing inventorship and the use of AI, including generative AI, in the inventive process, including illustrative examples in which AI systems play different roles in inventive processes and how, in each example, inventorship issues ought to be analyzed.”

The present guidance is in response to the recent Executive Order, and also considers all the previous work the USPTO has engaged in regarding AI-assisted inventions.

Section II. Inventors and Joint Inventors Named on U.S. Patents and Patent Applications Must Be Natural Persons

As noted above, the USPTO ruled previously (on April 22, 2020) that inventorship is limited to natural persons. That decision was later upheld in district court and, most recently, by the Federal Circuit in its 2022 decision in Thaler v. Vidal.  See Thaler v. Vidal, 43 F.4th 1207, 1213 (Fed. Cir. 2022) (affirming the holding “that only a natural person can be an inventor, so AI cannot be.”), cert denied, 143 S. Ct. 1783 (2023).

The rationale of the decision is based on the language in 35 U.S.C. § 100(f) which defines the inventor as an individual (or “individuals” if joint inventors) who invented or discovered the subject matter. The Supreme Court has separately held that, the word “individual,” when used in statutes, ordinarily means a human being unless Congress provided some indication that a different meaning was intended. Thaler, at 1211 (citing Mohamad v. Palestinian Auth., 566 U.S. 449, 454 (2012)). The Federal Circuit reasoned from this that an inventor or joint inventor must therefore be a natural person.

Section III. AI-Assisted Inventions Are Not Categorically Unpatentable for Improper Inventorship

Patent applications and patents must list the natural persons (i.e., humans) who significantly contributed to the invention. Section IV of the guidance (described below) further expands on what this means. Also, even if an AI system may have been instrumental in the creation of the claimed invention, no entity other than a natural person may be named as an inventor.

The guidance explains that the statutory framework (e.g., 35 U.S.C. § 115(a), 116(a)) requires that the inventors be named, and that inventors execute an oath or declaration. The oath or declaration requires that the inventor believes himself or herself to be the original inventor or the original joint inventor of a claimed invention in an application. From this framework, and the Thaler v. Vidal decision, the guidance concludes that “[t]hese statutes do not provide for recognizing contributions by tools such as AI systems (or other advanced systems) for inventorship purposes, even if those AI systems were instrumental in the creation of the invention.”

The guidance also notes that no other statues or provisions support the position that inventions that are created by natural persons using specific tools (including AI systems) result in improper inventorship. Per the guidance: “The statutes only require the naming of the natural persons who invented or discovered the claimed invention, irrespective of the contributions provided by an AI system or any other advanced system.” From this, the guidance concludes that the inability to list an AI system used to create an invention as a joint inventor does not create patentability issues.

The guidance further notes that judicial interpretation and policy considerations support the guidance’s conclusions. For example, invention has long been understood as the inventor’s conception, and conception, in turn, is a mental act understood to be performed by natural persons. Further, the patent system is designed to encourage human ingenuity. According to the guidance: “Focusing the patentability of AI-assisted inventions on the human contributions supports this policy objective by incentivizing human-centered activities and contributions, and by providing patent protections to inventions with significant human contributions while prohibiting patents on those that are not invented by natural persons.”

Section IV. Naming Inventors for AI-Assisted Inventions

As with joint inventors, to be named as an inventor on an AI-assisted invention, the person must have made a significant contribution to the invention. Several factors may be considered here. In general, courts have required that each 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”

These are referred to as the “Pannu factors,” after the case Pannu v. Iolab Corp., 155 F.3d 1344, 1351 (Fed. Cir. 1998).

Although the Pannu factors are typically considered in the case of joint inventorship, the guidance finds them instructive even when there is a single inventor in the case of AI-assisted inventions. Furthermore, while a named inventor does not have to contribute to every claim in an application or patent, a natural person must have significantly contributed to every claim.

Determination of inventorship is not a bright line test. The guidance provides several additional (and non-exhaustive) principles for applying the Pannu factors. Per the guidance, a natural person’s use of an AI system does not negate the person’s contribution as an inventor. Consistent with prior case law, recognizing a problem or having a general research plan is not in itself conception. But a significant contribution could be shown, on the facts of the case, by the way in which a person constructs a prompt in view of a specific problem to elicit a particular solution from an AI system. Merely recognizing the output of an AI system and appreciating its value does not contribute to inventorship; but, a person may make a significant contribution to the output of an AI system, or conduct a successful experiment with the output of an AI system. A person who develops an essential building block of the invention – including, perhaps, developing the AI system itself in view of a specific problem to elicit a certain answer – could significantly contribute to the invention. However, the guidance states that simply owning or overseeing an AI system, without more, does not result in a significant contribution to confer inventorship.

Section V. Patent Practice

The guidance applies not only to utility patents, but also design patents and plant patents.

As each person involved in prosecution of an application has a duty of candor and good faith to the USPTO, it is a duty to disclose all known information that is material to patentability. The guidance indicates that this duty includes evidence that demonstrates a named inventor did not significantly contribute to a claimed invention because the person’s contribution was made by an AI system. The guidance emphasizes that the duty of candor is not modified by the document, and that applicants rarely need to submit information regarding inventorship. However, special care should be taken to avoid potential negative consequences.

Presenting information to the office (e.g., by signing, filing, submitting, or advocating) also involves a duty of reasonable inquiry. Failure to inquire when the circumstances warrant could jeopardize the patentability or enforceability of a patent resulting from a patent application. While the guidance does not alter this duty, it may include inquiring about inventorship and whether inventorship, whether AI systems assisted in the invention, and whether individual contributions rise to the level of inventorship.

Conclusion

In sum, the USPTO’s guidance confirms that inventors may use AI systems, like other tools, in creating their inventions. That does not make the AI system an inventor—only natural persons may be inventors—nor does it necessarily create inventorship issues. The caveat is that the individual claiming to be an inventor must have made a significant contribution to the invention. The guidance provides factors for assessing this, as well as principles in how to apply those factors. Further guidance, including decisions by the USTPO and the courts, no doubt will further expand upon these factors and principles as AI systems increasingly are used as tools to aid in the innovative process.