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:
- Use of an AI system in creating an AI-assisted invention does not negate the person’s use of contributions as an inventor.
- 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.
- 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.
- 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.
- 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:
- Merely recognizing a problem or having a general goal or research plan to pursue does not rise to the level of conception.
- 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.
- A natural person who merely recognizes and appreciates the output of an AI system as an invention, is not necessarily an inventor.
- 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.