On February 12, 2024, the U.S. Patent and Trademark Office issued new inventorship guidance for inventions assisted by artificial intelligence (AI). The guidance explains that AI-assisted inventions are not "categorically unpatentable for improper inventorship," and that patent protection may be duly sought for inventions "for which a natural person provided a significant contribution." The guidance further explains that the inventorship determination should focus on "human contributions" as one of the goals of the patent system is to "incentivize and reward human ingenuity."
The guidance affirms that inventors and joint inventors named on U.S. patents and patent applications, including those for AI-assisted inventions, must be natural persons. This restriction applies even for inventions where an AI system may have been "instrumental in the creation of the claimed invention." But while an AI system may not be named as an inventor, "an AI system—like other tools—may perform acts that, if performed by a human, could constitute inventorship under [existing] laws."
The USPTO recognizes that determining when a natural person "significantly contributed" to an invention may be difficult and that there is "no bright-line test." However, the guidance clarifies that contributions made by a natural person should be evaluated under the Pannu factors to determine if such person may be properly named as an inventor or a joint inventor to the patent or patent application. Notably, a natural person must have "significantly contributed" to each claim in a patent or patent application. Inventorship is improper if a patent or patent application "includes a claim in which at least one natural person did not significantly contribute to the claimed invention, even if the application or patent includes other claims invented by at least one natural person."
To assist in ascertaining proper inventorship, the guidance provides a non-exhaustive list of "guiding principles" that inform the application of the Pannu factors in AI-assisted inventions. One of the notable principles is that "[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." Relatedly, "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 the designing, building, or training of the AI system is a significant contribution to the invention created with the AI system."
Finally, the guidance reminds patent applicants of their duty of disclosure and the duty of reasonable inquiry, and the applicability of these duties to the inventorship determination. The guidance also notes that there are no changes to the oath or declaration practice for named inventors. The practice for assignment of ownership rights also remains unchanged with regard to AI-assisted inventions.
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