In accordance with an executive order on the use of artificial intelligence (“AI”), the United States Patent and Trademark Office (“USPTO”) published guidance on February 13, 2024, that explained that a human can obtain a patent even in instances where “an AI system—like other tools—could perform acts that, if performed by a human, could constitute inventorship under [United States] laws.”1 In these instances, to meet statutory requirements, at least one human must have significantly contributed to the discovery of the claimed invention, irrespective of whether an AI system also contributed.2
Background
President Joe Biden issued the “Executive Order on the Safe, Secure, and Trustworthy Development and Use of Artificial Intelligence” on October 30, 2023. That executive order instructed the USPTO to publish guidance that addressed inventorship and the use of AI.3 While the USPTO and the US courts had already established that AI cannot be listed as an inventor on a US patent, the USPTO’s guidance addresses a major question that remained: how the USPTO would approach patent applications in which a human used AI to develop the claimed invention.4
USPTO’s Insights Into Inventorship Scenarios
When a human uses an AI system, the threshold questions remain as to whether the human made a significant contribution to the conception of the invention and whether that contribution is not insignificant when measured against the scope of the full invention.5 The guidance suggests some possible answers:
- While providing a problem to an AI system to solve is not a significant contribution, constructing a prompt to a specific problem to obtain a particular solution may rise to the level of a significant contribution.6
- In instances where the unpredictability of the technology requires reduction to practice to show conception, conducting successful experiments on the output of AI may allow a human to provide a significant contribution to the invention.7
- While ownership or “intellectual domination” over an AI system does not support a claim of inventorship,8 a human designing, building, or training an AI system to address a specific problem and achieve a specific result may meet the criteria of providing a significant contribution to a claimed invention. 9, 10
Disclosure Requirements
An applicant has a duty to disclose all information that is material to patentability. As patent eligibility requires identifying a human who provided a significant contribution to the claims, an applicant may be required to disclose any contribution made by an AI system if there is a question as to whether a human’s contribution meets the substantial contribution standard.11
To understand whether disclosure of an AI system’s contribution is required, those involved in the prosecution of a patent application should conduct a reasonable inquiry to determine which contributions to a patent claim were made by humans and by the AI system.12
Takeaways
This guidance clarifies that, in the view of the USPTO, those using AI can expect that patents remain a viable means of protecting inventions that flow from using an AI system. But it also shows that tracking human contributions will be of increased importance to allow applicants to show how a human’s involvement with an AI-assisted invention supports naming a natural person as an inventor as required under the US statute.
1 US Patent and Trademark Office [Docket No. PTO-P-2023-0043]. “Inventorship Guidance for AI-Assisted Inventions.” 89 Federal Register 10,043 (Feb. 13, 2024) at 10045.
2 Id. at 10046.
3 Proclamation No. 14110, 88 Fed. Reg. 75,191 (Oct. 30, 2023) at section 5.2(c)(i).
4 Thaler v. Vidal, 43 F.4th 1207, 1213 (Fed. Cir. 2022) (“[W]e are not confronted today with the question of whether inventions made by human beings with the assistance of AI are eligible for patent protection.”) (emphasis in original).
5 89 Federal Register 10,043 (Feb.13, 2024) at 10047.
6 Id. at 10048.
7 Id. at 10048-49.
8 Id. at 10049.
9 Id. at 10049.
10 The USPTO provided two examples of inventorship assessments for an AI-assisted invention. One example discusses a transaxle for a remote control car (Transaxle for Remote Control Car (uspto.gov)), and, the other, the development of a therapeutic compound for treating cancer (Developing a Therapeutic Compound for Treating Cancer (uspto.gov)). These examples provide insight into the categories discussed supra.
11 89 Federal Register 10,043 (Feb. 13, 2024) at 10049.
12 Id. at 10049-50.
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