On February 13, 2024 the United States Patent and Trademark Office (USPTO) released examination guidance pursuant to the “Executive Order on the Safe, Secure, and Trustworthy Development and Use of Artificial Intelligence.” The process started back in 2019 when the USPTO issued a request for public comment on patenting Artificial Intelligence (AI)-assisted inventions which was followed by a report in 2020 summarizing the various viewpoints found in the public comments received. In 2023, the USPTO issued a follow-up request for public comment focused on the issue of inventorship of AI or machine generated inventions. Following additional sessions to hear from various parties and the public in general, the USPTO determined that it would provide guidance regarding inventorship and patentability of AI-assisted inventions. Moreover, President Biden issued the “Executive Order on the Safe, Secure, and Trustworthy Development and Use of Artificial Intelligence” in October of 2023 which set out a number of policies and principles that would allow the US to lead in AI while also promoting responsible innovation, competition and collaboration so that a fair, open, and competitive ecosystem and marketplace for AI technologies could be created in a manner that would drive continued innovation in the AI field. The Executive Order required the USPTO to publish guidance to patent examiners and applicants addressing inventorship and the use of AI which was released on the 13^th of February, 2024.

As a background on the history of inventorship and AI, the genesis of the question of AI as an inventor started with the USPTO’s decision in April of 2020 denying petitions to name the AI system DABUS as an inventor on two patent applications. The reasoning behind this decision was simple: current U.S. patent laws limit inventorship to a natural person. This seemingly simple decision was then upheld by the U.S. District Court for the Eastern Division of Virginia in September of 2021. This decision was later appealed and the Federal Circuit in Thaler v. Vidal affirmed the underlying reasoning that only a natural person can be an inventor. However, in this decision the court specifically noted that it was not deciding on the related question of whether inventions made by natural persons with the assistance of AI are eligible for patent protection. However, the basis for the decision on inventorship should equally apply to co-inventors when one of the inventors is a natural person and the other is AI. In that situation, a co-invention made by a natural person and an AI would not be eligible for patent protection due to improper inventorship. This position by the USPTO that any patent application listing a machine as an inventor will be rejected due to improper inventorship led to the question of whether any invention that is AI-assisted would be eligible for patent protection.

The guidance addresses the above question by building upon previously established case law derived from Pannu v. Lolab Corp which focused on the level of contribution by the natural person to the claimed invention. The underlying concept as explained by the guidance is that while “AI systems cannot be listed inventors, the use of an AI system by a natural person does not preclude a natural person from qualifying as an inventor if the natural person significantly contributed to the claimed invention.” Interestingly, the guidance and the current structure of patent applications do not provide a mechanism to list or attribute the contribution of AI tools to the claimed invention, even if the AI systems were instrumental in the creation of the invention, due to the focus on current patent law and juridical precedent on natural persons. Since AI is not a natural person, there is no requirement to list the tool used in the creation of the claimed invention. This may be an area where Congress needs to act to enable a requirement to attribute non-natural person contributions to a claimed invention. The basis for this change would be to align patent disclosure policies with the stated policy goals of the Executive Order of promoting responsible innovation, competition and collaboration so that a fair, open, and competitive ecosystem and marketplace for AI technologies could be created in a manner that would drive continued innovation in the AI field.

As emphasized above, the central question or test under the new guidance can largely be boiled down to the “Significant Contribution” test. Historically, this test was used to determine whether an inventor must be included as a named inventor due to his/her significant contribution to the claimed invention. The guidance uses historical references to joint inventorship principles where the inventors may apply for a patent jointly, “even though (1) they did not physically work together or at the same time, (2) each did not make the same type or amount of contribution, or (3) each did not make a contribution to the subject matter of every claim of the patent.” Instead, each inventor must contribute in some significant manner to the invention, and these contributions have been tested by factors such that each inventor must: “(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.” These factors were derived from the Pannu case referenced above and in the event that an inventor fails to meet any one of these factors, that inventor should not be named as a listed inventor on the patent.

What do these factors have to do with inventorship in AI-assisted inventions? In the AI-assisted invention context, the natural person must contribute significantly to the invention pursuant to these Pannu factors. If the natural person fails any one of these factors, the natural person is precluded from being a listed inventor as is the AI system resulting in an application that is rejected for improper inventorship. When viewing this from the perspective of a single inventor using AI, the single inventor must significantly contribute to each claim in the patent application. If the AI tool contributes solely to one or more claims, this would violate the Pannu factors as there would be no natural person contributing to those particular claims and an AI system cannot be a listed inventor. The complexity of this historical precedent being applied to AI assisted inventions led the USPTO to outline Guiding Principles to assist applications and USPTO personnel in determining proper inventorship. These Guiding Principles are:

1. 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 so long as the natural person contributes significantly to the AI-assisted invention.
2. A natural person who only presents a problem to an AI system may not be a proper inventor of an invention identified from the output of the AI system. However, 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.
3. Reducing an invention to practice alone is not a significant contribution that rises to the level of inventorship. Therefore, a natural person who merely recognizes and appreciates the output of an AI system as an invention is not necessarily an inventor. 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.
4. A natural person who develops an essential building block from which the claimed invention is derived may be considered to have provided a significant contribution to the conception of the claimed invention 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 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.
5. Ownership of an AI system does not, on its own, make a person an inventor of any inventions created through the use of the AI system. Therefore, a person simply owning or overseeing an AI system that is used in the creation of an invention, without providing a significant contribution to the conception of the invention, does not make that person an inventor.

It should be noted that the USPTO guidance highlights that there is “no bright-line test” in determining whether a natural person’s contribution in AI-assisted inventions is significant. This should come as no surprise to anyone who has been in the world of patents for more than a few years. While the USPTO tries to provide the best guidance possible, the ambiguities often times leave more uncertainty than most practitioners would like to see resulting in a period of uncertain outcomes in both patent prosecution and litigation. As the AI field grows and capabilities that we cannot yet image are developed on top of AI systems, this is surely going to be an area of active litigation and developing case law.