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On February 11, 2024, the U.S. Patent and Trademark Office (PTO) issued additional guidance regarding the role of AI in inventing.

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Those of you who have followed this issue know that the PTO issued a pair of decisions on April 22, 2020, denying petitions to name an AI system (known as Device for Autonomous Bootstrapping of Unified Sentience (DABUS)) as an inventor in two patent applications. The PTO explained that U.S. patent law limits inventors to natural persons (humans). Those rulings were appealed. The appeals court affirmed the PTO decision while noting that it was not confronted with “the question of whether inventions made by human beings with the assistance of AI are eligible for patent protection.” The broad consequence of these rulings is their impact on the ownership of the outputs of AI. Inventors are default owners of their inventions. Many inventors assign their rights to other entities (for example, their employers) in exchange for compensation (for example, wages and patent awards). Without an inventor there is no ownership. So, an invention created solely by AI can’t be owned in the same sense that an invention created by a human is owned.

On October 30, 2023, President Biden issued the “Executive Order on the Safe, Secure, and Trustworthy Development and Use of Artificial Intelligence” (Executive Order).  The Executive Order instructed the PTO to publish guidance to examiners and applicants addressing inventorship and the use of AI, including generative AI, in the inventive process.  The guidance includes examples in which AI systems play different roles in the invention process and how, in each example, inventorship issues should be analyzed.

In the context of AI-assisted inventions, natural person(s) who create an invention using an AI system, or any other advanced system, must contribute significantly to the invention, as specified by what are known as the Pannu factors (named after Pannu v. Iolab Corp., 155 F.3d 1344, 1351 (Fed. Cir. 1998)). In short, a human person must contribute to each claim in a patent application. The guidance from the PTO includes five general factors that are listed below. What all of this means for innovators and owners of AI is that although humans must contribute to an invention, it is possible to protect inventions that are created with the assistance of AI.

Factors for evaluating the patentability of AI-assisted inventions.

A natural person’s use of an AI system in creating an AI-assisted invention does not negate the person’s contributions as an inventor.

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Merely recognizing a problem or having a general goal or research plan to pursue does not rise to the level of conception. Thus, a person who only presents a problem to an AI system to solve is not a proper inventor or joint inventor of an invention identified from the output of the AI system. Nonetheless, a significant contribution could be shown by the way the person constructs the prompt in view of a specific problem to elicit a particular solution from the AI system.

Reducing an invention to practice (for example, building a prototype) alone is not a significant contribution that rises to the level of inventorship. However, a person who takes the output of an AI system and makes a significant contribution to the output to create an invention may be a proper inventor. Alternatively, a person who conducts a successful experiment using the AI system’s output could demonstrate that the person provided a significant contribution to the invention even if that person is unable to establish conception until the invention has been reduced to practice.

A natural person who develops an essential building block from which the claimed invention is derived may be considered an inventor even though the person was not present for or a participant in each activity that led to the conception of the claimed invention. In some situations, the natural person(s) who designs, builds, or trains an AI system in view of a specific problem to elicit a particular solution could be an inventor, where the designing, building, or training of the AI system is a significant contribution to the invention created with the AI system.

Maintaining “intellectual domination” over an AI system does not, on its own, make a person an inventor of any inventions created by the AI system. Therefore, a person simply owning or overseeing an AI system that is used in the creation of an invention, is not an inventor.

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If you have any questions regarding this PTO Guidance, or questions surrounding the protection of AI-involved innovations, please reach out to your Michael Best attorney.

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U.S. Patent Office Guidance on Artificial Intelligence (AI) Assisted Inventions

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