On February 12th, the USPTO published the Inventorship Guidance for AI-assisted Inventions (“Guidance”).[1] The Guidance was pursuant to specific action items directed to the USPTO in President Biden’s October 23, 2023 Executive Order on the Safe, Secure, and Trustworthy Development and Use of Artificial Intelligence.[2]
Most notably is that, as a publication from an administrative agency of the Executive Branch, the USPTO did not use the Guidance as an opportunity to advocate for changes to legislative policy and recent judicial opinions regarding the unavailability to name an AI technology as an inventor or joint inventor in a patent application. Seemingly intentionally, the Guidance begins with affirmation of this principle without any suggestion advocating change. The remaining portion of the Guidance focuses on an issue well within administrative duties of the USPTO: the appropriateness of naming natural persons as inventors based on the use of an “AI system.”
As discussed in detail in the Guidance, this is a great example of how the previously existing framework for determining inventorship can be applied to emerging technological trends—albeit with some updated factual inquiries. In that regard, the framework for determination of inventorship remains a subjective consideration of whether a natural person significantly contributed to the inventive concept claimed in an application. Accordingly, the inclusion of facts related to the use of AI systems by individuals does not change the nature of this subjective examination or otherwise transform the determination of inventorship into an objective test. Rather, the Guidance provides direction as to how issues of the use AI-systems might impact the existing framework, including:
- Specific commentary that there is no requirement that the use of AI by an otherwise appropriate inventor would result in inventorship being improper or is there a duty to disclosure that AI was used by the properly named inventor.
- Consistent with the affirmation that AI systems cannot be named as an inventor, affirmation that if an AI system is used for reduction to practice of an inventive concept, the reduction to practice would not otherwise qualify for inventorship. This outcome is the same had a natural person been in the place of the AI system.
- Various guiding principles that helps evaluate whether a natural person’s contribution meets the “significant contribution” threshold including:
- The use of an AI system in creating invention does not negate the opportunity to be named as an inventor
- Recognition of a problem and presenting it to AI system to develop a solution does not in itself rise to the level of inventorship – but it may be possible that inventorship can be established in the formation of the prompt(s) provided to the AI system
- Designing, building or training an AI system to elicit a solution to a specific problem may be sufficient to establish inventorship
- Owning or overseeing a general AI system may not be sufficient to establish inventorship
- In multiple sections, indications that it would be improper to include claims in a patent application that were identified as being invented by natural human (consistent with the above). But it also provides that such an inclusion cannot be corrected under USPTO provisions, and that the applicant’s duty of disclosure requires identification of any such claim.
- An assertion that a patent practitioner’s duty of inquiry should include an inquiry as to the role of AI in inventorship, which appears to be a new requirement.
- Finally, an assertion that priority will not be recognized to any foreign application that names an AI as inventor – for at least the portion that the AI invented.
The Guidance represents significant and necessary guidance from the USPTO, especially as the use of AI systems become much more prevalent across a wide range of industries. While the determination of inventorship remains a very subjective analysis, the guiding principles in the Guidance should assist patent practitioners in determining inventorship.
[1] https://www.federalregister.gov/documents/2024/02/13/2024-02623/inventorship-guidance-for-ai-assisted-inventions
[2] (https://www.whitehouse.gov/briefing-room/presidential-actions/2023/10/30/executive-order-on-the-safe-secure-and-trustworthy-development-and-use-of-artificial-intelligence/).
