The U.S. Patent and Trademark Office (USPTO) issued Guidance this week on how to evaluate patent inventorship when technology is developed using artificial intelligence (AI) systems, including generative AI. Companies developing and utilizing AI should understand the role human engineers and scientists play in working with AI tools and developing new technologies to ensure their research and development efforts continue to be adequately protected through the U.S. patent system.

Natural Persons Only as Inventors

The Federal Circuit determined in 2022 that computer systems, such as AI, cannot be named as an inventor on a patent application. Accordingly, for innovations developed using AI, it can be necessary to sort out which contributions were made by the AI itself, and which contributions were made by human inventors.

In general, courts evaluate the Pannu factors to determine whether a person is a true inventor. Those factors include ensuring that each inventor did “(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.”

The Guidance reiterates that only natural persons may be named inventors on U.S. patent applications. In the case of patent applications claiming priority to foreign application(s) which do allow the naming of AI system inventors, the Guidance clarifies that patent Applicants must name only natural person inventors in their U.S. patent application.

The Guidance specifies situations when a natural person may be an appropriate inventor, even though an AI system made a contribution to the innovation. In order to be named as an inventor, the person must have made a significant contribution to the conception of the subject matter of a patent claim – the mental portion of invention.

AI-Assisted Inventorship Guidance

In determining whether an inventor made a significant contribution to an AI-assisted invention, the Guidance provides five guiding principles. 

• First, the use of an AI system does not itself negate a natural person’s inventive contribution. 
• Second, a person who merely inputs a problem to an AI system may not be an appropriate inventor in the output of that AI system. However, the person may have made a significant contribution to the preparation of a particular prompt for an AI system. 
• Third, recognition of invention in an AI system output alone is likely insufficient to rise to the level of inventorship. However, conducting a successful experiment with the AI system output or using the AI system output in an inventive way may be a significant contribution causing the person to become an inventor. 
• Fourth, a natural person can make a significant contribution by designing, building, or training an AI system in such a way as to create an inventive output. 
• Finally, merely owning or maintaining an AI system is not itself a significant contribution that will cause a natural person to be a true inventor.

The Guidance reminds practitioners of their duty of disclosure to the USPTO, and patent Examiners of their ability to request information from patent applicants in certain circumstances. In the context of the inventorship of AI-assisted inventions, it may be necessary for patent applicants to disclose to the USPTO facts or circumstances which demonstrate that an AI system, not a natural person, invented the subject matter. Moreover, the USPTO may follow up on facts suggesting that AI invented the subject matter with requests for information regarding whether or how AI was used in the inventive process.

Practical Tips

Patent applicants seeking to protect AI-assisted innovation should work with their engineering and development teams to ensure that inventorship is accurately determined using the examples in the Guidance. It may be beneficial to make records of the human contributions to AI-assisted innovation including the contributions made in designing, building, or training AI systems, or in developing prompts for such AI systems.

International patent applicants filing U.S. patent applications claiming priority to foreign application(s) should take care to only name the natural person inventors who significantly contributed to the invention.

The Guidance applies to patent applications filed after the date of the Notice of the Guidance in the Federal Register on February 13, 2024, including to design and plant patent applications. Comments on the Guidance may be submitted to the USPTO within the next 90 days. The Guidance was published pursuant to President Biden’s Executive Order on the Safe, Secure, and Trustworthy Development and Use of Artificial Intelligence.

Additional guidance under the same Executive Order is expected in the coming months which will address further criteria in patenting AI-assisted inventions, including standards for enablement and obviousness of AI-assisted inventions.