The United States Patent Office (“PTO”) on February 12, 2024 issued a guidance (the “Guidance”) regarding inventorship on inventions that are made with the assistance of artificial intelligence (“AI”). The PTO has refused to award patents to inventions created entirely by AI, finding that the law requires human inventorship. This new Guidance makes clear, however, that the use of AI in developing new technologies does not automatically ban patentability, and that the inventorship inquiry should focus on human contributions.
The Guidance results from an October 30, 2023 Executive Order on the use of AI, which instructed the Director of the PTO to “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.”
Under the Guidance, which took effect on February 13, 2024, an AI system (still) cannot be an inventor, either standing alone or as a co-inventor with a human. The use of AI does not however, disqualify an invention from patent protection, provided a natural person made a “significant contribution” to the invention, applying the same standards employed in evaluating joint inventorship. This analysis will be done on a claim-by-claim basis, meaning that the natural person must make a significant contribution to the subject matter of each claim and must have “recognition and appreciation” of the invention. The Guidance applies to design and plant patents as well as utility patents.
What constitutes a “Significant Contribution?”
The PTO will look at the “significant contribution” issue on a case-by-case basis, meaning that no bright-line rules are likely to arise. The Guidance does provide some specifics, however, to assist inventors in determining whether this mark has been met. First, the mere recognition of a problem in need of a solution will not be considered to be a significant contribution, meaning a person who presents a problem seeking a solution to an AI system would not, absent further contribution, rise to the level of conception. Further, the reduction of an inventive idea that was created by an AI system will not rise to the level of inventorship. Likewise, the mere recognition and appreciation of the AI’s output as an invention would not result in human inventorship. Finally, ownership or control over an AI system would not, standing alone, make the owner an inventor.
Instead, the contribution of the natural person must be to change or improve the AI output to a level sufficient to be named as a co-inventor, had the original idea stemmed from a human rather than computer source. Alternatively, the natural person could have developed an essential building block that the AI built upon. This could take the form of the human-developed concept being the basis for a query to an AI system, or could in some circumstances result from the person designing, building and/or training the AI to solve a particular problem.
What to Include in a Patent Application
The Guidance provides instruction on how to prepare and file an application on inventions that include AI development. First, the AI system should not be identified as an inventor, regardless of the level of contribution the AI made to the claims. Further, while a natural person need not have contributed to the subject matter of every claim in an application, there must be at least one natural person who made a significant contribution to each claim that is filed (although this contribution could be to an earlier claim on which another claim depends).
The Guidance notes that the duty of disclosure includes the disclosure of the contribution of the AI system to the overall invention. Such information is material to patentability, and thus subject to the disclosure requirement, because it may impact the determination of whether the natural person(s) made a significant contribution to the invention. Practitioners should inquire as to the use of AI as a part of the preparation of an application.
Conclusion
AI is rapidly becoming an important tool in the development of new technologies. While the PTO will not grant a patent to an invention that arose entirely from AI, patent protection can still be realized on works in which a natural person made substantive, inventive contributions to the claims. The PTO’s Guidance provides a set of factors that the PTO will use to assess this. Further clarity will develop over time as the PTO issues inventorship decisions and as cases work their way through the Federal Circuit. Additionally, the PTO is accepting comments on this Guidance through May 13, 2024, and has stated that it will revise or issue a new guidance related to inventorship and AI as events dictate.
