How to Avoid Losing Your AI-Assisted Patent

Robot at Chalk Board #AI, #IPGuy, #Patent, #Intellectualproperty, #Patentoffice

New patent guidelines have created a shadow inventor

On February 13, 2024, the United States Patent Office issued Guidelines on how it will analyze inventorship when AI is part of the inventive process. (Click here for a recent article I wrote about the new guidelines.) The Guidelines apply to utility, design, and plant patents and they are retroactive.

New Inventors have Emerged from the FogRobot at Chalk Board #AI, #IPGuy, #Patent, #Intellectualproperty, #Patentoffice

Overall, the Guidelines say that an inventor must contribute in some significant manner to the invention. This follows Court decisions, and in particular the Pannu case. The Federal Register provides a non-exhaustive list of five principles  to assist applicants and USPTO examiners in determining inventorship. Of these five, two are particularly interesting.

  • First, 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.
  • Second, 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 it’s a significant contribution to the invention created with the AI system.

This broadens the potential for who can be named as an inventor. It also creates the potential need to get assignments from those involved in creating prompts, training, designing, and building AI systems. Since the Guidelines are retroactive, this may create issues for existing patents.

An example where shadow inventors may arise

I talked with a group of inventors who used AI to analyze a number of chemical formulations to determine which would be most promising for their product.  The AI system proposed several possibilities from a selected group of potential formulations. These were then tested. One of the tested proposals resulted in a solution that was then patented.

I know that they listed who they thought were inventors. They were the human scientists who put together the possibilities and then tested them to arrive at a solution.

What they consider was the person who drafted the prompt, or the people or company that designed, built, or trained the AI system. Until these newly-issued Guidelines, that would not have been considered.  Now it must be. It’s possible that there are more inventors who should be listed on the patent, and own an undivided interest.

Initially, every inventor owns an equal right to the patent, no matter what they contributed. This means that each inventor can do whatever they want with the patent. They can sell it, license it, and make and sell the product or process covered by the invention, all without the permission of any other inventor. They can also frustrate any lawsuits since all owners have to be joined in a lawsuit. They can also sell or license their patent to the defendant who then is not an infringer because they have a right to the patent just like the plaintiff.

Can This Really Happen?

In 1989, Ethicon, a manufacturer of surgical instruments, filed a patent infringement suit against a competitor, United States Surgical, over U.S. Patent No. 4,535,773. The inventor named on the patent was Dr. Inbae Yoon. Yoon granted Ethicon an exclusive license to practice his invention. The patent had 55 claims but only two claims were asserted against U.S. Surgical: claims 34 and 50.

During the lawsuit, U.S. Surgical learned of a co-inventor named Young Jae Choi. Choi was an electronics technician who collaborated with Dr. Yoon for 18 months. US Surgical asked the court to add Choi as an inventor. The court agreed finding that Choi had co-invented claims 33 and 47. Two claims that were not even involved in the lawsuit.

The court found that there was corroborating evidence that supported Choi’s assertions that he was an inventor. The evidence was dated notes and drawings that Choi had along with his technical abilities as an electronics technician.

The court dismissed Ethicon’s lawsuit because Choi had granted U.S. Surgical a retroactive license to the patent. OUCH!

You can read more about these devastating consequences in another article here. It’s not easy to decide who should be named as inventors. To help, I’ve written a guide to make these decisions easier. You can get that guide here.

The way to avoid this result is with an assignment.

To protect your patent rights and prevent each inventor from doing what they want, the rights must be assigned to a single person or entity. Once assigned, that person or entity owns all rights.

The best protection is to capture all possible inventors and automatically have them assign their rights. This can be done through employment and third-party agreements with provisions to capture these rights. If everything was done by employees of the company, they are likely owned by the company, but this is not a guarantee. A good summary of employer rights to employee inventions can be found in this ABA article. Patent rights are less likely to be owned by the company if third party is used. In all third-party situations, an agreement requiring an assignment of any intellectual property rights should be used. Going forward, the best approach is to review and update all agreements, particularly with outside vendors providing AI technology or prompt writing.

The tough problem is existing patents. Everyone involved will need to be examined to determine if they are potential inventors. If an inventor emerges, you must convince them to assign their rights to the company and add them to the patent. It is possible they will refuse leaving your patent in jeopardy.

The future is uncertain

These are only guidelines, and they have not yet been tested in court. This leaves the future foggy at best. The USPTO has created the potential for these new inventors. A Court may disagree that they have that power. But, for now, it’s a requirement that includes the addition of these new inventors to the patent with their right or ownership. In my next article I’ll discuss the requirement to advise the Patent Office of those AI inventors, the procedure for doing that, and the consequences if you don’t

The Takeaway

You must analyze those involved If AI was involved in your invention and you have or plan to get a US Patent. If new inventors emerge, you must notify the USPTO and capture the rights that are not owned by you.

Bill Honaker
Bill Honaker, The IP Guy

About the Author

Bill Honaker, “The IP Guy” is a former USPTO Examiner, a partner with Dickinson-Wright, and author of the forthcoming book, Invisible Assets – How to Maximize the Hidden Value in Your Business. To download a sample chapter, click here.

To get answers to your questions click here. To schedule a time to talk, you can access my calendar by clicking here, email, or call me at 248-433-7381.







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