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AI-Assisted Inventions: Are They Patentable?

With artificial intelligence (AI) playing a significant role in innovation and providing an influx in the number of AI-related patent applications filed annually, the United States Patent and Trademark Office (USPTO) recently issued guidance on how the USPTO will analyze inventorship of AI-assisted inventions.[1] 

The guidance provides that AI-assisted inventions are not categorically unpatentable. Although an AI system cannot be listed as an inventor on a patent application or patent, as affirmed on appeal by the Federal Circuit in Thaler v. Vidal[2], the USPTO indicates that a natural person may still qualify as an inventor if that natural person makes a significant contribution to the claimed invention.

In determining whether a natural person has made a significant contribution in an AI-assisted invention, the USPTO will look to the Pannu factors. The Pannu factors were established by the courts to determine, in the context of joint inventions, which inventors made a significant contribution to the conception of the invention for purposes of determining inventorship and requires that each co-inventor:

     

      1. Contributed in some significant manner to the conception of the invention

      1. Made a contribution to the claimed invention that is not insignificant in quality, when that contribution is measured against the dimension of the full invention

      1. Did more than merely explain to the real inventors well-known concepts and/or the current state of the art[3]  

    Failing to meet any one of the Pannu factors will preclude a finding of inventorship by the individual. To assist in the application of the Pannu factors in AI-assisted inventions, the USPTO offers the following non-exhaustive list of guidelines:

       

        1. A natural person may use AI assistance: Using an AI system in the creation of an invention does not automatically negate the person’s contributions as an inventor.

        1. Merely recognizing a problem is not sufficient: Presenting a problem to an AI system resulting in an invention identified from the output of the AI system is not considered a significant contribution. If, however, the natural person creates a prompt in view of a specific problem which results in a particular solution from the AI system, this may be deemed a significant contribution. 

        1. Merely reducing an invention to practice is not sufficient: Merely reducing an invention to practice is not itself a significant contribution for purposes of inventorship. For example, simply recognizing the output of an AI system as an invention is not typically considered a significant contribution, especially when one of ordinary skill would readily recognize the benefits of the output. On the other hand, making a significant contribution to the output to create an invention may give rise to inventorship. Further, a natural person who uses AI output to run a successful experiment may be considered an inventor if that the person provides a significant contribution to the invention, even if conception is not established until after the invention has been reduced to practice.    

        1. Developing, designing, building or training an AI system may be sufficient: Developing, designing, building or training an AI system with respect to a specific problem to generate a particular solution may give rise to inventorship where such activity is a significant contribution to the invention created by the AI system. Further, developing an essential building block may be considered a significant contribution to the conception of the claimed invention even if the person was not a part of each activity leading to the conception of the claimed invention. 

        1. Merely owning or overseeing an AI system is not sufficient: Merely owning or overseeing an AI system that is used in the creation of an invention does not give rise to inventorship unless a natural person provides a significant contribution to the conception of the invention.[4]

      Of course, the inventorship analysis is to be performed on a case-by-case basis and on a claim-by-claim basis. Each case will turn on its own facts—there is no bright-line standard.[5]  

      In providing these guidelines, the USPTO hopes to continue to “promote the Progress of Science and useful Arts”[6] by encouraging human ingenuity. In consideration of any comments and in view of the constantly evolving technology, the USPTO provides that this inventorship guidance may change and may be supplemented periodically.

      Please contact a member of the HSE Intellectual Property team if you have any questions on the patentability of an AI-assisted invention.


      [1] The guidance was issued on February 13, 2024 pursuant to President Biden’s “Executive Order on the Safe, Secure, and Trustworthy Development and use of Artificial Intelligence” dated October 30, 2023. 

      [2] Thaler v. Vidal, 43 F.4th 1207, 1213 (Fed. Cir. 2022), cert denied, 143 S. Ct. 1783 (2023). 

      [3][3] Pannu v. Iolab Corp., 155 F.3d 1344, 1351 (Fed. Cir. 1998).

      [4] Inventorship Guidance for AI-Assisted Inventions, 89 Fed. Reg. 10043 (February 13, 2024), available at https://www.federalregister.gov/documents/2024/02/13/2024-02623/inventorship-guidance-for-ai-assisted-inventions#footnote-49-p10048. 

      [5]  Id. at 10048 (citing Fina Oil & Chem. Co. v. Ewen, 123 F.3d 1466, 1473 (Fed. Cir. 1997) and In re Jolley, 308 F.3d 1317, 1323 (Fed. Cir. 2002)).

      [6] U.S. Const. art. I, § 8, cl. 8. 

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