Inventorship Guidance for AI-Assisted Inventions

On February 13, 2024, the USPTO published guidance for AI-assisted inventions in the Federal Register, outlining two basic points: First, inventors and joint inventors named on U.S. patents and patent applications must be natural person, and Second, AI-assisted inventions are not categorically unpatentable for improper inventorship. The guidance also reiterated the Pannu factors for identifying inventors of AI-assisted inventions. Pannu v. Iolab Corp., 155 F.3d 1344, 1351 (Fed. Cir. 1998)

The USPTO previously determined that inventorship is limited to natural persons, and this was affirmed in Thaler by the Eastern District of Virginia (Thaler v. Hirshfeld, 558 F.Supp.3d 238 (E.D. Va. 2021)) and the Court of Appeals for the Federal Circuit (Thaler v. Vidal, 43 F.4th 1207, 1213 (Fed. Cir. 2022), cert denied, 143 S. Ct. 1783 (2023)). Thus, AI cannot be named as an inventor or co-inventor. The Guidance recognizes that while an AI system may not be named an inventor or joint inventor in a patent or patent application, an AI system— like other tools—may perform acts that, if performed by a human, could constitute inventorship under our laws, but the patent statute limits inventorship to natural persons.

While AI systems and other nonnatural persons cannot be listed as inventors on patent applications or patents, the use of an AI system by a natural person does not preclude a
that natural person from qualifying as an inventor (or joint inventors) if that natural person significantly contributed to the claimed invention. The Federal Circuit has made clear that conception is the touchstone of inventorship. Sewall v. Walters, 21 F.3d 411, 415 (Fed. Cir.
1994). 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 thereafter to be applied in practice. Pannu v. Iolab Corp., 155 F.3d 1344, 1351 (Fed. Cir. 1998).

There is no requirement for a named inventor to contribute to every claim in an application or patent; a contribution to a single claim is sufficient. However, each claim must have been
invented by at least one named inventor. In other words, a natural person must have significantly contributed to each claim in a patent application or patent. In the event of a single person using an AI system to create an invention, that single person must make a significant contribution to every claim in the patent or patent application.

The Guidelines identify these factors for when a natural person is an inventor of an AI-assisted invention:

  1. Use of an AI system in creating an AI-assisted invention does not negate the person’s use of contributions as an inventor.
  2. 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.
  3. 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.
  4. 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.
  5. A natural person who designs, builds, or trains an AI system in view of a specific problem to elicit a particular solution could be an inventor, if that is a significant contribution to the invention created with the AI system.

The Guidelines identify these factors for when a natural person is not inventor of an AI-assisted invention:

  1. Merely recognizing a problem or having a general goal or research plan to pursue does not rise to the level of conception.
  2. 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.
  3. A natural person who merely recognizes and appreciates the output of an AI system as an invention, is not necessarily an inventor.
  4. 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.

There’s More to Invention in the U.S. than Butterscotch Ripple

Willie Wonka famously said that invention is 93% perspiration, 6% electricity, 4% evaporation, and 2% butterscotch ripple. South Africa and Australia have removed the “perspiration” requirement allowing AI to be named the inventor on a patent. (South African issued Patent No. 2021/03242 earlier this year on an AI invention; and in August 2021, and an Australian Judge ruled in Thaler v. Commissioner of Patents, VID 108 of 2021, that the same AI invention qualified for patent protection). The EU and the US, however, are still insisting on a human inventor — or in terms of Wonka’s definition, some “perspiration.”

The Eastern District of Virginia cemented the human inventor requirement, saying in a September 2 opinion in Thaler v. Hirshfeld (1:20-cv-00903-LMB-TCB) that “[b]ased on the plain statutory language of the Patent Act and Federal Circuit authority” an artificial intelligence machine cannot be an inventor. The Court relied upon the statutory definition of inventor in 35 U.S.C.100(f): “the individual, or if a joint invention, the individuals collectively who invented or discovered the subject matter of the invention.” The Court explained that “Congress’s use of the term ‘individual’ in the Patent Act strengthens the conclusion that an ‘inventor’ must be a natural person.”

The Court found this conclusion buttressed by the Federal Circuit’s consistent holdings that under current patent law “inventors must be natural persons,” citing Univ. of Utah v. Max-Planck-Gesellschaft, 734 F.3d 1315, I323 (Fed. Cir. 2013), and Beech Aircraft Corp. v. Edo Corp., 990 F.2d 1237, 1248 (Fed. Cir. 1993)).

Since patents and patents laws are the creation of humans, the answer to the question of whether artificial intelligence can be the inventor on a patent may very well vary by jurisdiction. However, aside from the wording of the statute and precedent noted by the District Court, there are problems with executing the oath or declaration (which are only partly solved the AIA’s creation of the substitute statement), as well as with ownership and assignment that make AI inventorship problematic.

As we celebrate Labor Day in the United States, we note that labor — the “perspiration” — has not yet been removed as an ingredient of Wonka’s definition of invention in the U.S.

Inventorship, Unlike a Claim, is a “Nose of Wax”

In Egenera, Inc. v. Cisco Systems, Inc., [2019-2015, 2019-2387] (August 28, 2020), the Federal Circuit affirmed the district court’s claim construction but vacated the invalidity judgment of U.S. Patent No. 7,231,430, based on judicial estoppel and remanded for further proceedings.

Prior to claim construction, during an inter partes review proceeding, Egenera separately petitioned the USPTO to remove one of the eleven listed inventors from the ’430 patent (the presence of the inventor prevented Egenera from antedating the cited prior art). Following the district court’s claim construction and a trial on inventorship, Egenera asked the district court to add the removed inventor back to the patent (because the removed inventor was found to have conceived one of the claim limitations. The district court determined that judicial estoppel prevented Egenera from relisting the inventor and held the ’430 patent invalid for failing to name all inventors.

The Patent Act allows a listing of inventors to be corrected either upon petition to the Director (35 U.S.C.§ 256(a)), or upon court order, see §256(b)), and a patent cannot be invalidated if inventorship can be corrected instead. The Federal Circuit noted that its precedent provides that “error” in §256 includes “all varieties of mistakes—honest and dishonest”—rather than only unintentional inaccuracy. § 256 is a savings provision, functioning to prevent invalidation when correction is available; it is the inequitable-conduct rules that provide a safety valve in the event of deceit.

The Federal Circuit held that §256 does not exclude “considered acts,” or even “deceptive intention,” from the meaning of “error.” “Error” is simply the incorrect listing of inventors.

The district court here concluded that Egenera was judicially es-topped from adding Mr. Schulter’s name back to the patent after it held a trial establishing him to be an inventor—thereby invalidating the patent for improper inventorship. Judicial estoppel is an equitable doctrine that prevents a litigant from taking a litigation position inconsistent with one successfully asserted in an earlier court proceeding. The purpose of the doctrine is to protect the integrity of the judicial process. A a court examines (1) whether a party’s earlier and later positions are “clearly inconsistent”—that is, “mutually exclusive”; (2) whether the party “succeeded in persuading a court to accept” the earlier position; and (3) whether the party would “derive an unfair advantage or impose an unfair detriment” on the other side if not estopped.

Because inventorship is a complex legal conclusion that depends on claim construction, once claim construction was performed, the Federal Circuit found that it was not inconsistent to correct inventorship after the claims were construed. Thus, the district court erred in determining that the first factor of clearly inconsistent positions was met.

The Federal Circuit also found that Engera did not meet the second factor, persuading the court to accept its earlier position. The Federal Circuit observed that no persuasion was involved in getting the USPTO to remove the inventor. Finally the Federal Circuit found no unfair advantage to Engera.

Concluding that the district court legally erred as to each factor, the Federal Circuit held that the district court abused its discretion by applying judicial estoppel, vacating the district court’s invalidity judgment and the accompanying cost award, and remanding for further proceedings.

Collaboration and Concerted Effort are What Result in Joint Inventorship

In Dana-Farber Cancer Institute, Inc., v. Ono Pharmaceutical Co., [2019-2050] (July 14, 2020), the Federal Circuit affirmed the district court determination that Dr. Gordon Freeman and Dr. Clive Wood be added to U.S. Patent Nos. 7,595,048, 8,168,179, 8,728,474, 9,067,999, and 9,402,899.

The appeal relates to an inventorship dispute over groundbreaking work in the field of cancer treatment. Each patent at issue claims a method of treating cancer by administering antibodies targeting specific receptor-ligand interactions on T cells. Ono challenges the district court’s decision on two bases: (1) the district court’s legal analysis of conception, and (2) the district court’s factual findings regarding inventorship. We address each argument in turn.

The Federal Circuit explained that a joint invention is simply the product of a collaboration between two or more persons working together to solve the problem addressed. To be a joint inventor, one must: (1) contribute in some significant manner to the conception or reduction to practice of the invention, (2) make a contribution 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 inventors well-known concepts and/or the current state of the art.

There is no explicit lower limit on the quantum or quality of inventive contribution required for a person to qualify as a joint inventor. People may be joint inventors even though they do not physically work on the invention together or at the same time, and even though each does not make the same type or amount of contribution.

The Federal Circuit noted that conception is the touchstone of the joint inventorship inquiry, and conception is complete when an idea is definite and permanent enough that one of skill in the art could understand the invention. An inventor need not know, however, that an invention will work for its intended purpose in order for conception to be complete, as verification that an invention actually works is part of its reduction to practice.

The Federal Circuit refused to adopt a rule that research made public before the date of conception of a total invention cannot qualify as a significant contribution to conception of the total invention. Such a rule would ignore the realities of collaboration, especially that collaboration generally spans a period of time and may involve multiple contributions. It is certainly true that simply informing another about the state of the prior art does not make one a joint inventor. Collaboration and concerted effort are what result in joint inventorship, but a collaborative enterprise is not negated by a joint inventor disclosing ideas less than the total invention to others.

The Federal Circuit went on to reject a series of challenges to the district court’s factual analysis for each patent, and concluded that Freeman and Wood were co-inventors, and affirmed the district court

Ha Ha, Our New Robot Overlords Can’t Get Patents

On July 29, 2019, U.S. Patent Application Serial No. 16/524350 was filed naming DABUS as the inventor and Stephen L. Thaler as as the assignee/applicant. Papers accompanying the application clarified that the invention was conceived by a “creativity machine” name DABUS, and it should be named as the inventor of the application. On August 8, the U.S. Patent and Trademark Office issued a Notice to File Missing Parts of Nonprovisional Application.

On January 20, 2020, the Applicant filed a Petition to vacate the August 8 Notice, contending that inventorship should not be limited to natural persons and, therefore, the naming of DABUS as the inventor in the application was proper, and thus the Notice was unwarranted
and/or void.

The Commissioner’s decision states that to the extent the petitioner argues that an “inventor” could be construed to cover machines, the patent statutes preclude such a broad interpretation. Interpreting “inventor” broadly to encompass machines would contradict the plain reading of the patent statutes that refer to persons and individuals. The Commissioner also relied upon the Federal Circuit in Univ. of Utah v. Max-Planck-Gesellschafl zur Forderung der Wissenschaflen e.V., where the Federal Circuit held that a state could not be an inventor, and Beech Aircraft Corp. v. EDO Corp.,
stated that: “only natural persons can be ‘inventors.”

The Commission concluded that because the application names a machine, DABUS, as the inventor, and because current statutes, case law, and
USPTO regulations and rules limit inventorship to natural persons, the application does not comply with 35 U.S.C. § 115(a), and thus the USPTO properly issued the August 8, 2019 Notice requiring the inventor to be identified by his or her legal name.

The Commissioner also rejected Petitioner’s argument that the USPTO has granted patents relating to the DABUS machine and, thus implicitly legalized the process by which DABUS arrive at an invention. The granting of a patent under 35 U.S.C. § 151 for an invention that covers a machine does not mean that the patent statutes provide for that machine to be listed as an inventor in another patent application any more than a patent for a camera allows the camera hold a copyright. A machine does not
qualify as an inventor under the patent laws.

Finally, the Commissioner rejected Petitioner’s public policy arguments, including that allowing a machine to be listed as an inventor would incentivize innovation using AI systems, reduce the improper naming of persons as inventors who do not qualify as inventors, and support the public notice function by informing the public of the actual inventors of an
invention. The Commissioner found that these policy considerations do not overcome the plain language of the patent laws as passed by the Congress and as interpreted by the courts.

Complaint Established Sufficient Facts to Support Claim for Inventorship

In Coda Development S.R.O. v. Goodyear Tire & Rubber Company, [2018-1028](February 22, 2019), the Federal Circuit vacated the dismissal of Coda’s complaint, seeking correction of inventorship of patents on self-inflating tires and alleging misappropriation of its trade secrets.

The district court dismissed the complaint under 12(b)(6) for failing to state a claim, and denying Coda the opportunity to amend its complaint. However the Federal Circuit, accepting the complaint’s well-pleaded factual allegations as true and drawing all reasonable inferences in Plaintiffs’ favor, concluded that Plaintiffs’ claims for correction of inventorship are plausible. The Federal Circuit noted that the complaint described Goodyear’s prior failures with inflation technology; and that it described two meetings with Goodyear representatives—both arranged at Goodyear’s initiative and attended by Goodyear’s point-person on SIT technology. The Federal Circuit further noted that Goodyear sought technical information from Coda at both meetings, and Goodyear’s point person requested that he and his team be allowed to spend some time alone with Coda’s functional prototype, during which he photographed it without permission. The Federal Circuit noted that a month, Goodyear applied for the first in a series of patents covering assemblies and methods concerning self-inflating tires, with claims covering the allegedly novel, proprietary, and confidential information Coda disclosed to Goodyear.

The Federal Circuit said that construing the complaint in the light most favorable to Plaintiffs and taking these and other highly specific facts together—including, but not limited to, Goodyear’s prior failure, its eagerness to meet with Coda, its unauthorized photography of Coda’s functional prototype, the timing of its distancing itself from Coda and its filing for the ’586 patent, and a pointed accusation from one of its former employees—we conclude that Plaintiffs’ correction-of-inventorship claims are plausible.

The Federal Circuit also found that the district court also erred in dismissing Plaintiffs’ trade-secret-misappropriation claim as time-barred. The statute-of-limitations inquiry was when Plaintiffs discovered or by the exercise of reasonable diligence should have discovered their claim. The Federal Circuit rejected Goodyear’s argument that based upon the facts alleged in the complaint, plaintiff should have begun investing earlier, observing that plaintiff might have simply assumed Goodyear lost interest, or that Goodyear would honor is nondisclosure agreement. Considering only the complaint, and drawing all reasonable inferences in Plaintiffs’ favor, the Federal Circuit concluded that the district court erred in dismissing Plaintiffs’ trade-secret misappropriation claim as time-barred.

Neither Express Agreement, nor Implied Agreement, Clearly Deprived a Putative Inventor of Standing to Challenge Inventorship of a Patent Under 35 USC 256

In James v. J2 Cloud Services LLC, [2017-1506] (April 20, 2018), the Federal Circuit reversed the dismissal of James’ claim for correction of inventorship for lack of jurisdiction.

James alleged that he is the sole inventor of the subject matter claimed in U.S. Patent
6,208,638, on systems and methods for accepting an incoming message
over a circuit switched network and transmitting it over a packet switched network, which names Rieley and Muller as the inventors.  On defendant’s motion the district court dismissed the complaint for lack of Article III standing, concluding that James failed to allege facts sufficient to show that he has an ownership or financial interest in the patent.

To have Article III standing, a plaintiff must have (1) suffered an injury in fact, (2) that is fairly traceable to the challenged conduct of the defendant, and (3) that is likely to be redressed by a favorable judicial decision.  The Federal Circuit said that if Mr. James were to prevail on his allegations he would stand to gain concretely, whether through securing an entitlement to seek damages for past acts of infringement or otherwise.
Such a gain would be directly related to the merits of the claim and would redress the asserted injury of being deprived of allegedly rightful ownership.  The Federal Circuit said that in the absence of other facts, that is enough to give James Article III standing.

However, the district court found that James assigned away, or entered into an enforceable agreement to assign away, any ownership rights he may have had in
the patent.  However, the Federal Circuit concluded that he did not.  The Federal Circuit could not conclude that the Software Development Agreement precludes James from
retaining ownership rights in patents on his inventions, finding it “amenable to the construction that it does not assign, or promise to assign, patent rights that would
otherwise accrue to Mr. James as an inventor.”  The Federal Circuit reviewed the sections addressed by the district court or argued by the parties, and when considered in the light favorable to James, as they must be on a motion to dismiss, do not deprive James of constitution standing.

The Federal Circuit the addressed the the “hired to invent” doctrine of United States v. Dubilier Condenser Corp., 289 U.S. 178, 187 (1933), and Standard Parts Co. v. Peck, 264 U.S. 52, 59–60 (1924), under which an employer may “claim an employee’s inventive work where the employer specifically hires or directs the employee to exercise inventive faculties.”  The “hired-to-invent” rule is “firmly grounded in the principles of contract law,” and “[t]o apply this contract principle, a court must examine the employment relationship at the time of the inventive work to determine if the parties entered an implied-in-fact contract to assign patent rights.”  Whether the doctrine is viewed as a matter of federal law or a matter of the state law of implied-in-fact contracts, its applicability in a given case depends on the terms of the contractual relationship of the parties.  The Federal Circuit noted what it found an important distinction: the agreement was not with James personally, but with GSP.  Thus James was not himself an “employee” of, or personally hired by, defendant’s predecessor in interest.  Moreover, because the Software Development Agreement largely or even wholly defines the terms of the alleged “hiring” of James (actually of GSP),there is at least a factual dispute about any implied assignment or promise to assign.  Accordingly, the Federal Circuit found that it was improper to dismiss the case under Rule 12(b)(1) for lack of standing based on the hired-to-invent principle.

An Omitted Inventor Can’t Correct Inventorship of a Patent Owned by a Government Agency

In a non-precedential opinion in Ali v. Carnegie Institution of Washington, [2016-2320] (April 12, 2017), the Federal Circuit affirmed the dismissal, on grounds of soverign immunity,  of Ali’s lawsuit to be added as a co-inventor on several of defendants’ patents. The district of Oregon court dismissed UMass on the ground that it is entitled to sovereign immunity under the Eleventh Amendment of the U.S. Constitution and transferred the case to the U.S. District Court for the
District of Columbia, where the court dismissed the case for want of an indispensible party.

Ali argued that the Oregon court erred in refusing to conclude that UMass waived sovereign immunity when, in return for federal funding under the Bayh-Dole Act.  The Federal Circuit noted that the question of Eleventh Amendment waiver is a matter of Federal Circuit law, and that a district court’s decision on sovereign immunity is subject to de novo review.  The Federal Circuit said that UMass waives sovereign immunity under only two circumstances: first, if the state on its own initiative invokes the jurisdiction of the federal courts; and second, upon a clear declaration by the state of its intent to submit to federal jurisdiction.  The Federal Circuit said that UMass’s alleged agreement to be subject to suit by the federal government under a contract controlled by and consistent with the Bayh-Dole Act did not operate as a “clear declaration” that it waived its sovereign immunity
as to Mr. Ali’s suit against it for damages arising from his alleged omission as a co-inventor of the patents-in-suit.

The net result is that it is impossible for an omitted inventor to correct inventorship of a patent that is at least partially owned by a government entity.




District Court Correctly Added Inventors Who Contributed to at least one Claim Element

In Vapor Point LLC. v. Moorhead, [2015-1801, 2015-2003] (August 10, 2016), the Federal Circuit affirmed the district court’s correction of inventorship, dismissal of the infringement action, and denial of a attorneys’ fees.

A person who alleges that he is a co-inventor of the invention claimed in an issued patent who was not listed as an inventor on the patent may bring a cause of action to correct inventorship in a district court under 35 U.S.C. § 256.  Inventorship is a question of law entitled to de novo review by this court.  All inventors, even those who contribute to only one claim or one aspect of one claim of a patent, must be listed on that patent.

The Federal Circuit agreed that the district court’s findings were sufficient to support its inventorship judgment. Co-inventors need not physically work together or at the same time, make the same type or amount of contribution, or make a contribution to the subject matter of every claim of the patent.  Inventorship is determined on a claim-by-claim basis.

The Federal Circuit said that inventorship and ownership are separate
issues.  The patent owner waived the Federal Circuit’s review of whether the added inventors had an obligation to assign the invention by affirmatively representing to the district court that resolution of the inventorship issue would dispose of the infringement issue.