USPTO Issues Guidelines for AI Inventions

Beware! Your Prompt Writer May Own Your Invention

If AI was used to assist in creating your invention, you’re not precluded from obtaining a patent, but at least one natural person must be an inventor of each claim. AI itself cannot be an inventor, and can’t be named as an inventor, even if it was instrumental in the creation of the claimed invention.

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. The Guidelines apply to utility, design, and plant patents and they are retroactive. Applicants have a duty to disclose material information regarding inventorship, such as AI, and their counsel have a duty to make reasonable inquiry.

The Guidelines apply existing legal standards for determining an inventor while excluding AI as an inventor. The Guidelines discuss the requirements to be named as an inventor and incorporated the Pannu factors. These factors are from the CAFC decision in Pannu v Iolab Corp., 155F.3d 1344 (Fed. Cir. 1998). Under the Pannu factors, an inventor must:

  1. contribute in some significant manner to the conception or reduction to practice of the invention,
  2. contribute to the claimed invention that is not insignificant in quality, when that contribution is measured against the dimension of the full invention, and
  3. do more than merely explain to the real inventor(s) well-known concepts and/or the current state of the art.

Determining who should be named as an inventor gets complicated when more than one person might be named as an inventor. So, what does it take to be an inventor? The critical question is: “who conceived of the invention that is claimed?” The law defines conception as, “the formation in the mind of the inventor, of a definite and permanent idea, of the complete and operative invention, as it is hereafter to be applied in practice.” Although not entirely precise, an easier way to think about who the inventor of a particular claim might be is to ask who figured out the complete invention (this can be multiple people) and they didn’t need to experiment or consult experts.

When AI is involved, it will be complicated because AI could be an inventor, although it cannot be named as inventor. In this situation, you must treat AI in the same way as other inventors. Did AI figure out the complete invention of any claim and the solution didn’t need experimentation or expert consultation? If so, AI is an inventor. The next step is to ask if a natural person is an inventor of any of those claims. The reason for this next step is that AI cannot be the only inventor of any claim. If only AI is an inventor, those claims cannot be part of the patent. These are complex issues that must be analyzed be legal counsel to make the proper determination.

The PTO provided a non-exhaustive list of five principles to assist applicants and the USPTO. Of these 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. But it also creates the need to get assignments from those involved in creating prompts, training, designing, and building AI systems. Since the Guidelines are retroactive, this may create serious issues for existing patents.

The Guidelines are a good step forward. But they haven’t been tested by the courts. Even if the Guidelines withstand judicial review, you can be certain that this will be an issue in every future patent lawsuit. Every patent suit will include questions of whether AI was involved, why it wasn’t disclosed to the USPTO if not disclosed, and whether a natural person was truly an inventor. It’s great that the USPTO doesn’t preclude AI-assisted inventions; however, it will increase the cost of patents, increase patent challenges, and require careful documentation to prove inventorship. If you use AI to invent, you now have new, difficult, and complex issues to address.

 

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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. You can also find more articles about IP, patents, trademarks, and trade secrets at IPguy.com.