CSG Law Alert: USPTO Provides Guidance on How Inventorship Is Impacted When Artificial Intelligence Is Used

President Biden’s October 30, 2023 Executive Order on the Safe, Secure, and Trustworthy Development and Use of Artificial Intelligence included an instruction to the US Patent and Trademark Office (USPTO) Director to issue guidance to patent examiners and Applicants on AI and inventorship, including issues related to using AI and generative AI (genAI) in the inventive process. Three and a half months later, on February 13, 2024, that guidance was published by the USPTO in the Federal Register and provides how the patentability of inventions developed with the assistance of AI should be managed. This guidance applies to all applications, and to all patents resulting from applications, filed before, on, or after February 13, 2024, and aims to inform both Examiners at the USPTO as well as Applicants for patents how to assess inventorship for inventions that have been impacted by AI.

The major theme of the guidance, which is consistent with earlier USPTO decisions and announcements, is that AI can be used in the inventive process.  However, only humans can be Inventors, with the Guidance stating that “the inventorship analysis should focus on human contributions, as patents function to incentivize and reward human ingenuity.” (emphasis added).

If AI was used to some extent in developing your invention, who should be named as an Inventor? 

Only humans can be Inventors, so for there to be correct inventorship, all actual Inventors must be human; but where is the line between AI rising to the role of Inventor and mere AI assistance for human Inventors?

The Guidance explains that applications for AI-assisted inventions will not categorically have improper inventorship, but that each named person must have “significantly contributed” to the claimed invention, and conversely AI must not have “significantly contributed” to those claims. This analysis must be performed on a claim-by-claim basis.

In making this determination of whether or not each named Inventor contributed in some significant manner to each claim, each Inventor 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.” The Guidance refers to these as the Pannu factors, from the Court of Appeals for the Federal Circuit case Pannu v. Iolab Corp., 155 F.3d 1344, 1351 (Fed. Cir. 1998).

The Guidance provides further information about how to construe each of the Pannu factors. For example, for the first factor, each named inventor must have significantly contributed to the “definite and permanent idea of the complete and operative invention as it is thereafter applied in practice.” For some technologies such as mechanical devices, this factor will likely be easier to construe. For nascent technologies, less so.

Since AI cannot be named as an Inventor, how do you ensure that humans, to the exclusion of AI, are properly named?

This analysis will be crucial and must occur on a claim-by-claim basis. Each human Inventor must make a significant contribution to the conception or reduction to practice of at least one of the claims. As noted in the Guidance, AI can assist in making these contributions if used as a tool by the Inventor. For example, if the person elicits a particular solution from the relied upon AI system based on the construction of particular prompts, or if the person makes a significant contribution to the output of an AI system, the person can properly be an Inventor. The challenging analysis will be whether the human contribution was significant enough.

To aid in an Inventorship determination, records should be kept of the type of AI assistance that was used, including prompts and outputs of any large language models. These records can be valuable in supporting an inventorship analysis in a future litigation if the significance of a human Inventor contribution comes into question.

Proper inventorship in applications impacted by AI will likely be a contested issues in any litigation since a standard based on how much a human “significantly contributed” to the claimed invention is rife for disagreement.

Does this Guidance impose new disclosure requirements for newly filed Applications?

No, the Guidance does not change or modify the existing duty of disclosure that each individual associated with filing and prosecuting a patent has. However, how the existing duty of disclosure applies to AI related applications does impact the analysis.

Under existing duties information that raises a prima facie case of unpatentability, such as improper inventorship, must be disclosed to the USPTO. Therefore, evidence that demonstrates an Inventor did not “significantly contribute” to the claimed invention, such as reliance on AI for the conception of an Invention, must be disclosed.

To safeguard against the requirement for such a disclosure, care should be taken to ensure proper inventorship, for each claim, at the time of filing and also throughout prosecution as claimed subject matter is added or deleted.

Disclosure of potential improper inventorship is a duty owed to the USPTO by registered practitioners and can result from actual knowledge or information gleaned from a necessary, reasonable inquiry. Although the Guidance also does not change the existing duty of reasonable inquiry into proper inventorship, the Guidance does remind practitioners that an inquiry reasonable under the circumstances must be undertaken to assess whether the contributions made by potential Inventors rises to the level of inventorship.

Lastly, for those interested, written comments in view of this Guidance can be submitted through the Federal eRulemaking Portal, and must be received on or before May 13, 2024. Based on the feedback received from its stakeholders and any relevant additional judicial decisions, the USPTO may issue further guidance, modify the current guidance, or issue additional examples.

If you have questions about how inventorship of your applications will be interpreted under this new Guidance or would like help in establishing an Inventorship plan to ensure proper inventorship of AI related applications, please contact the Patent Team attorneys at CSG Law.