As directed by President Biden’s Executive Order (EO) on the Safe, Secure, and Trustworthy Development and Use of Artificial Intelligence (the AI EO),1 the United States Patent and Trademark Office (USPTO) released its Inventorship Guidance for AI-Assisted Inventions (Guidance) on February 12, 2024.2 The Guidance concludes that using AI in connection with an invention does not preclude obtaining a patent for that invention, but because only natural persons can be named inventors under United States law, every patent requires a human to make a significant contribution to the invention.
The Guidance begins with an analysis of the United States Patent Act and the federal circuit’s decision in Thaler v. Vidal, which held “that only a natural person can be an inventor, so AI cannot be.”3 That decision is based on the definition of “inventor” contained in 35 U.S.C. § 100(f), which is limited to an “individual who invented or discovered the invention.” AI tools, however, are not individuals and thus cannot meet this definition.4 The Guidance acknowledges that while AI tools may perform acts that could constitute inventorship if done by a human, the statutory language places limits on inventorship and AI must not be named as an inventor, even if “instrumental” to the invention.5 Further reenforcing these points, the Guidance reiterates that the “patent system is designed to encourage human ingenuity.”6
For AI-assisted inventions, the question of inventorship—and thus patentability—turns on whether a human made a “significant contribution” to the invention. Although the Guidance references the Pannu factors, which are used to assess whether a person is an inventor, the main inquiry focuses on a human’s contribution to the conception of the invention.7 A human solely reducing to practice an invention conceived by an AI tool is not enough to qualify as an inventor. Importantly, the “significant contribution” applies on a claim-by-claim basis, so that every claim of a patent must name a human inventor—even a single claim without a human inventor amongst other human-invented claims makes inventorship improper for the entire patent.8
To help understand the “significant contribution” requirement, the Guidance provides a handful of examples—with an explicit caveat that “a natural person’s contribution in AI-assisted inventions is significant may be difficult to ascertain, and there is no bright-line test”—that provide some generalized takeaways:9
- Merely owning or overseeing an AI tool is not enough to be an inventor.
- A goal, research plan or simply giving an AI tool a problem to solve requires more, such as a prompt designed to obtain a specific solution.
- Taking an AI output and then making a “significant contribution” might make a human an inventor.
- Training an AI to solve a problem in a particular way might be a “significant contribution.”
The Guidance emphasizes that although AI tools should not be named as an inventor, that does not mean that its use can be obscured. While the Guidance does not modify a patent applicant’s duty of disclosure to impose a mandatory disclosure requirement for AI tools, noting that “applicants rarely need to submit information regarding inventorship,”10 the Guidance describes how that duty may uniquely apply to AI tools. For example, if information raises a question of unpatentability for improper inventorship (e.g., whether a human “significantly contributed” to be properly named as an inventor), then applicants must disclose that information to the USPTO.11 Likewise, the duty of reasonable inquiry remains unchanged but can require practitioners to investigate the extent to which AI tools were used to create the invention.
The inventorship of AI-assisted inventions and the copyright protection of AI-generated works are two of the most pressing legal questions surrounding AI. Recent developments in both areas highlight the complexities and uncertainties that AI poses to existing legal frameworks. The AI EO directed the USPTO to publish additional guidance on the patent eligibility of AI innovations later this year. The USPTO is hosting a webinar covering the Guidance on March 5, 2024, and is accepting public comments on the Guidance through May 13, 2024.12
Akin previously covered the United States Copyright Office’s position here.
1 Exec. Order No. 14110, 88 Fed. Reg. 75191 (Nov. 1, 2023), https://www.whitehouse.gov/briefing-room/presidential-actions/2023/10/30/executive-order-on-the-safe-secure-and-trustworthy-development-and-use-of-artificial-intelligence/.
2 The Guidance was released on February 12 and published in the Federal Register on February 13. USPTO issues inventorship guidance and examples for AI-Assisted Inventions, UNITED STATES PATENT AND TRADEMARK OFFICE (Feb. 12, 2024), https://www.uspto.gov/subscription-center/2024/uspto-issues-inventorship-guidance-and-examples-ai-assisted-inventions; Inventorship Guidance for AI-Assisted Inventions, 89 Fed. Reg. 10043 (Feb. 13, 2024), https://www.federalregister.gov/documents/2024/02/13/2024-02623/inventorship-guidance-for-ai-assisted-inventions. Note that the Guidance is not substantive rulemaking, but instead sets policy interpreting how existing law applies. The Guidance applies to utility, design, and plant patents. Inventorship Guidance for AI-Assisted Inventions, 89 Fed. Reg. at 10045, 10049.
3 Thaler v. Vidal, 43 F.4th 1207, 1213 (Fed. Cir. 2022), cert. denied, 143 S. Ct. 1783 (2023). 35 U.S.C. § 100(f) states “[t]he term ‘inventor’ means the individual or, if a joint invention, the individuals collectively who invented or discovered the subject matter of the invention.”
4 Inventorship Guidance for AI-Assisted Inventions, 89 Fed. Reg. at 10045.
5 Id. at 10046.
6 Id. (emphasis in original).
7 Pannu v. Iolab Corp., 155 F.3d 1344 (Fed. Cir. 1998). The factors are typically applied to determining joint inventorship and include that every inventor “(1) contribute in some significant manner to the conception or reduction to practice of the invention, (2) 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 (3) do more than merely explain to the real inventors well-known concepts and/or the current state of the art.” Id. at 1351.
8 Inventorship Guidance for AI-Assisted Inventions, 89 Fed. Reg. at 10048.
9 Id. at 10048.
10 Id. at 10049.
11 Improper inventorship is a ground for unpatentability under 35 U.S.C. §§ 101 and 115. Id. at 10049 (citing Manual of Patent Examining Procedure § 2157).
12 Inventorship guidance for AI-Assisted Inventions Webinar, UNITED STATES PATENT AND TRADEMARK OFFICE (Feb. 12, 2024), https://www.uspto.gov/about-us/events/inventorship-guidance-ai-assisted-inventions-webinar.
