New USPTO guidelines on AI assisted inventions

In response to the Biden administration’s Executive Order on the Safe, Secure, and Trustworthy Development and Use of Artificial Intelligence on 30 October 2023, which outlined policies and principles to promote responsible Artificial Intelligence innovation and competition, the United States Patent and Trademark Office (USPTO) issued inventorship guidance for artificial intelligence (AI) assisted inventions.  These guidelines came into effect on 13 February 2024 and apply to all applications and all patents resulting from applications, filed before or after this date. 

What is the purpose of the AI Assisted Invention guidance?

The purpose of the guidance is to provide inventors and patent applicants with a framework regarding AI assisted inventions and how they will be judged at the USPTO.  A key takeaway from the guidance is that the requirement for “human inventorship” remain unchanged.  Meaning, inventions created entirely by AI will remain unpatentable.  However, the guidance enables the patenting of inventions that are AI assisted, provided that human inventorship “significantly contributed”.

The USPTO considers the Pannu factors that arose in the US case of Pannu v. Iolab Corp., 155 F.3d 1344, 1351 (Fed. Cir. 1998), which traditionally applied in the determination of joint inventorship.  It was held that an “inventor” must:

• be an individual that has contributed “in some significant manner” to the claimed invention in its conception or reduction to practice of that invention;
• make a contribution that is not insignificant in its quality, with the contribution being measured against the full invention’s dimension; and
• do more than explain to real inventors of well-known concepts alongside or otherwise, the current state of the art.

What constitutes “significant contribution”?

The USPTO provides several guiding principles for determining what will constitute “significant contribution”:

• 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.  The natural person can be listed as the inventor or joint inventor if the natural person contributes significantly to the AI-assisted invention.
• Merely recognising a problem or having a general goal or research plan to pursue does not rise to the level of conception.  A natural person who only presents a problem to an AI system may not be a proper inventor or joint 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.
• Reducing an invention to practice alone is not a significant contribution that rises to the level of inventorship.  Therefore, a natural person who merely recognises and appreciates the output of an AI system as an invention, particularly when the properties and utility of the output are apparent to those of ordinary skill, 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.  Alternatively, in certain situations, 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 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(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 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.

Links and further references

Legislation

Executive Order on the Safe, Secure, and Trustworthy Development and Use of Artificial Intelligence

Inventorship Guidance for AI-Assisted Inventions

Cases

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

Further information about artificial intelligence

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Disclaimer

This article contains general commentary only.  You should not rely on the commentary as legal advice.  Specific legal advice should be obtained to ascertain how the law applies to your particular circumstances.

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