The US Patent and Trademark Office (USPTO) issued guidance on Artificial Intelligence (AI) and inventorship, including issues related to using AI in the inventive process on February 13, 2024. This guidance applies to all applications and patents regardless of their filing dates, and aims to inform both Examiners at the USPTO as well as Applicants for patents how to assess inventorship for inventions that have been impacted by AI.
The major theme of the guidance, which is consistent with earlier USPTO decisions and announcements, is that AI can be used in the inventive process. However, only humans can be Inventors, with the Guidance stating that the “the inventorship analysis should focus on human contributions, as patents function to incentivize and reward human ingenuity.”(emphasis added).
If AI was used to some extent in developing your invention, who should be named as an Inventor?
Only humans can be Inventors, so for there to be correct inventorship, all actual Inventors must be human; but where is the line between AI rising to the role of Inventor and mere AI assistance for human Inventors?
The Guidance explains that applications for AI-assisted inventions will not categorically have improper inventorship, but that each named person must have “significantly contributed” to the claimed invention, and conversely AI must not have “significantly contributed” to those claims. This analysis must be performed on a claim-by-claim basis.
In making this determination of whether or not each named Inventor contributed in some significant manner to each claim, each Inventor must:
- Contribute in some significant manner to the conception or reduction to practice of the invention.
- 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.
- Do more than merely explain to the real inventors well-known concepts and/or the current state of the art.
The Guidance refers to these as the Pannu factors, from the Court of Appeals for the Federal Circuit case Pannu v. Iolab Corp., 155 F.3d 1344, 1351 (Fed. Cir. 1998).
The Guidance provides further information about how to construe each of the Pannu factors. For example, for the first factor, each named inventor must have significantly contributed to the “definite and permanent idea of the complete and operative invention as it is thereafter applied in practice.” For some technologies such as mechanical devices, this factor will likely be easier to construe. For nascent technologies, less so.
Since AI cannot be named as an Inventor, how do you ensure that humans, to the exclusion of AI, are properly named?
This analysis will be crucial and must occur on a claim-by-claim basis. Each human Inventor must make a significant contribution to the conception or reduction to practice of at least one of the claims. As noted in the Guidance, AI can assist in making these contributions if used as a tool by the Inventor. For example, if the person elicits a particular solution from the relied upon AI system based on the construction of particular prompts, or if the person makes a significant contribution to the output of an AI system, the person can properly be an Inventor. The challenging analysis will be whether the human contribution was significant enough.
Does this Guidance impose new disclosure requirements for newly filed Applications?
No, the Guidance does not change or modify the existing duty of disclosure that each individual associated with filing and prosecuting a patent has. However, how the existing duty of disclosure applies to AI related applications does impact the analysis.
Under existing duties information that raises a prima facie case of unpatentability, such as improper inventorship, must be disclosed to the USPTO. Therefore, evidence that demonstrates an Inventor did not “significantly contribute” to the claimed invention, such as reliance on AI for the conception of an Invention, must be disclosed.
To safeguard against the requirement for such a disclosure, care should be taken to ensure proper inventorship, for each claim, at the time of filing and also throughout prosecution as claimed subject matter is added or deleted. An issued patent that is deemed to have improper inventorship can lead to invalidation or unenforceability of that patent, so proactive inventorship inquiries are vital.
Disclosure of potential improper inventorship is a duty owed to the USPTO by registered practitioners and can result from actual knowledge or information gleaned from a necessary, reasonable inquiry. Although the Guidance also does not change the existing duty of reasonable inquiry into proper inventorship, the Guidance does remind practitioners that an inquiry reasonable under the circumstances must be undertaken to assess whether the contributions made by potential Inventors rises to the level of inventorship.
What should you do next?
Educate inventors and in-house attorneys regarding proper inventor identification consistent with the new Guidelines and implement internal procedures to ensure that the Guidelines are followed so that the proper human inventors are named as inventors for any patent applications. Inventorship in applications impacted by AI will likely be litigated in the future since a standard based on how much a human “significantly contributed” to an AI assisted invention is rife for disagreement. To that end, inventors should track and record their use of AI in the inventive process, such as the type of AI assistance that was used, including prompts and outputs of any large language models, so that a proper inventorship determination can be made at the time of filing. These records will be valuable in supporting an inventorship analysis in any future litigation if the significance of a human inventor contribution comes into question.
The CSG Law Patent Group is experienced in preparing patent applications and conducting inventorship analysis for inventions impacted by AI. If you have questions about how inventorship of your applications will be interpreted under this new Guidance, or would like help in establishing an Inventorship Guidance document to ensure proper inventorship of AI-related applications, please contact the authors for more information.
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Jeffrey Weinick (Chair of the Patent Law Group) is a registered patent attorney whose practice focuses on the acquisition of patent rights throughout the world, the management of intellectual property assets and the licensing and enforcement of intellectual property rights. He can be reached at [email protected] or (973) 530-2028.
Drew Berweger (Counsel, Patent Law Group) has comprehensive experience in many technological areas including medical devices, diagnostics, consumer devices and appliances, semiconductors, inkjet printers and scanners, image processing, and various software including Artificial Intelligence and Machine Learning-reliant technologies. He can be reached at [email protected] or (212) 324-7285.
