How to Know Who to Name as an Inventor

Steampunk woman with crystal ball

If AI assisted in the Invention a human must be an inventor.

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 listed as 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 process. 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 incorporate 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.

There’s a lot underlying these three requirements. Naming the inventors on a patent application that includes AI assistance can create confusion and add complexity to an already complicated process. There are no reported cases involving the application of the new USPTO Guidelines to AI-assisted inventions.  However, the recent case of Blue Gentian, LLC v. Tristar Prod., Inc. is a great example of how the law is applied to determining the human inventors of a patented invention.

The Story

A single meeting, held on August 23, 2011, was central to the court’s inventorship holding. Ragner Technology Corporation was seeking investors to bring its MicroHose product, an expandable hose, to market. Gary Ragner, the company founder, and several others met with Michael Berardi in Berardi’s home to discuss the opportunity.

At the time of the meeting, Berardi had no experience designing or building hoses. He later testified that he was familiar with elastic bands based on his experience working in a hardware store, and prior to the meeting, had watched a video demonstrating the MicroHose. He testified that after seeing the video, but before the meeting, he came up with the idea for his own expandable hose while at the gym. He testified that he “wonder[ed] what would happen if [he] put water through” a resistance band, but that he did not start building this hose at that time because, “it was just…a nebulous concept.”

Just hours after the meeting, during which Berardi reviewed the MicroHose business plan, he bought supplies to build a hose prototype. Like Ragner Technology Corporation’s prototype, it had an inner elastic tube to provide a biasing force and an outer tube that water ran through. Berardi filed his first patent application for an expandable hose in November 2011, less than three months after the meeting. That application was issued as U.S. Patent No. 8,291,941 with Berardi listed as the sole inventor. In 2012, his company, Blue Gentian, then sued Tristar, the licensee of Ragner’s patents, for infringement, asserting the ’941 patent, three related utility patents, and two of Berardi’s design patents. Tristar counterclaimed to correct inventorship.

The court found that each of the four asserted utility patents had one or more claims that require at least three elements that Ragner contributed, and the design patents showed the crumpled hose, which is the result of how the hose is made.

Design patents only cover the appearance of a product. To be an inventor, you must contribute to how it looks. The court found that the three components from Ragner created that appearance.

The Outcome

Ragner was declared a co-inventor of all the patents in the suit, and Tristar was given rights equal to Berardi’s company, Blue Gentian. The lawsuit was therefore dismissed, and Blue Gentian lost its right to enforce its patent, meaning it no longer had exclusive rights to sell the product.

The Law

As in this case, a district court can order the correction of inventorship when it determines that an inventor has been erroneously omitted from a patent. All inventors, even those who contribute to only one claim, or one aspect of a claim, must be listed on the patent. It’s the omitted inventor’s burden to prove that they should have been added, because it’s presumed that the correct inventors were included.

An alleged inventor must show that he contributed significantly to the conception (the definite and permanent idea of the invention) or reduction to practice of at least one claim, and supply evidence to corroborate this testimony. Corroborating evidence may take many forms, including contemporaneous documents or physical evidence, circumstantial evidence, or oral testimony of someone other than the alleged inventor. As stated in the case, “To determine whether testimony has been sufficiently corroborated, a rule of reason test is applied where ‘all pertinent evidence is examined in order to determine whether the inventor’s story is credible.’”

How Do You Determine an Inventor?

So, what does it take to be an inventor? The critical question is: Who conceived of the invention that is claimed?

Patents typically have several claims broken down into independent and dependent claims. You must look at each of the claims and determine who conceived the invention covered by those claims. There can be cases where different inventors conceived different parts of the invention in different claims. Under the USPTO Guidelines, at least one human must be named an inventor of each claim.

Conception is 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.

Let’s break this down. There are four requirements in this statement. Conception is:

  1. The formation in the mind of the inventor
  2. Of a definite and permanent idea
  3. Of the complete and operative invention
  4. As it is hereafter to be applied in practice.

When is an idea definite and permanent? Courts have told us that an idea is sufficiently definite and permanent when:

  1. Only ordinary skill would be necessary to reduce it to practice, and
  2. Extensive research or experimentation is not needed.

An easier way to think about who to name as the inventor of a particular claim is to determine who figured out the complete invention (this can be multiple people, and it can include AI) without needing to experiment or consult experts.

In the Blue Gentian case, Berardi and Ragner met to discuss the invention. From the court opinion, Ragner appears to have conceded that Berardi had involvement as an inventor. Ragner didn’t try to have him removed as an inventor. He only fought to have himself added. Ragner established that he conceived elements claimed in at least one of the claims of each patent. He was able to prove that he contributed in some significant manner and formed in his mind a definite and permanent idea (the three components that made up the hose), which was the complete and operative invention, as it was applied in practice. This made him a co-inventor.

If AI is involved, at least one human had to also contribute in some significant manner and form in his mind a definite and permanent idea which was the complete and operative invention as it was applied in practice to be named a co-inventor.

The Takeaway

When AI is involved, it could be an inventor, although it cannot be named as inventor. You must treat AI in the same way as other inventors. Did AI contribute significantly to 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 by legal counsel to make the proper determination. Failure to correctly name the inventors and take into account AI’s involvement could jeopardize the patent.

 

About the Author:

Bill Honaker, “The IP Guy” is a former USPTO Examiner, a partner with Dickinson-Wright, and author of 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 Bill@IPGuy.com, or call me at 248-433-7381.

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