Intellectual property protection can be an important element of securing, enforcing, and licensing rights to technology. Recently, the U.S. Patent and Trademark Office (USPTO) and the Copyright Office have been tasked with addressing the impact of new artificial intelligence tools on copyright and patent protection. While both offices are continuing to develop reports on this subject, both have already published initial guidance on artificial intelligence copyright and patent applications and registrations where the subject matter was developed using an AI tool. Some key takeaways from each Office’s guidance are provided below.
U.S. Patent and Trademark Office
The PTO guidance on AI-assisted inventions applies to utility patents, design patents, plant patents, and applications. The PTO has emphasized an applicant’s duty to disclose any information material to determining the patentability of an invention where the use of an AI tool in an invention is not sufficiently disclosed:
- Inventors named on patents and applications must be “natural persons.” The PTO cites its denial of petitions to name an AI system as an inventor, and those decisions’ being upheld on appeal. The PTO also cites its 2023 Manual of Patent Examining Procedure (MPEP), which states that an inventor must be a natural person. The PTO also notes that, from a public policy perspective, patents are meant to incentivize humans to invent and innovate.
- Accordingly, patent applications that name a machine or system as an inventor or joint inventor on an application data sheet, an inventor’s oath or declaration, or a substitute statement will be denied for improper inventorship. According to the PTO, AI-assisted inventions are not automatically unpatentable for improper inventorship. However, an AI machine cannot be named as an “inventor” in and of itself.
- Natural persons who create an invention using AI must “significantly contribute” to the invention. A natural person’s contributions to an invention are assessed by the PTO considering the factors articulated in Pannu v. Iolab Corp. on a case-by-case basis. One Pannu factor questions if the inventor has “contribute[d] in some significant manner to the conception or reduction to practice of the invention.” The PTO notes that where evidence shows that the named inventor on an application did not significantly contribute to the claimed invention under the Pannu factors, a rejection of the claim would be appropriate.
Copyright Office
The Copyright Office addresses copyright applications and existing registrations. Registrations that do not comply with the Office’s guidance have a duty to correct the registration as appropriate.
- The degree of human creative control is material in determining the copyrightability of AI-generated material. On a case-by-case basis, the Copyright Office must determine whether an AI system merely assisted in the creation of a work, or whether the machine itself carried out the traditional elements of authorship. If the traditional elements of authorship are conducted by the AI system, as opposed to the human, then the work will not be registered.
- A work may be registrable with the Copyright Office where it combines sufficient human authorship and AI-generated material, together. For example, a human arranging AI-generated material in a sufficiently creative way may constitute an original work of authorship. Copyright law will protect only the human-authored elements of a work product, which are independent from the AI-generated work itself.
- Applicants have a duty to disclose the inclusion of AI-generated content in a work that was submitted for registration. Applicants must also provide a brief explanation of the author’s contributions to the material. Where both human and AI-generated contents are part of the same work, the applicant should indicate that the selection, coordination, and arrangement of the human-authored content were carried out by the author and that the AI-generated content was generated by artificial intelligence. Applicants should also correct any existing applications or registrations that inadequately disclose information about the presence of AI-generated material.
Special thanks to Destiny Brown for assistance with this article
