February 13, 2024

Client Alert: Patent Office Requests Public Comment on Its Newly Issued Inventorship Guidance for AI-assisted Inventions

On February 13, 2024, the United States Patent and Trademark Office (“Patent Office”) published guidance setting forth its agency policy for analyzing inventorship issues as AI systems, including generative AI, play a greater role in the innovation process. The Patent Office is seeking public comments on this guidance, which are due by May 13, 2024.

A brief summary of the inventorship guidance is below, and two example applications are available on the Patent Office’s website. Please reach out to Vincent Y. Ling and J. Kain Day of Munger, Tolles & Olson if you have any questions or would like more information.

Inventors Must Be Natural Persons: The guidance starts by summarizing the Federal Circuit’s recent decision in Thaler v. Vidal, 43 F.4th 1207, 1213 (Fed. Cir. 2022), and addressing how that decision extends to other questions of inventorship. Thaler interpreted the word “inventor” in 35 U.S.C. § 100(f) to be limited to natural persons, and the Patent Office will interpret that decision as applying to “joint inventors” and “coinventors” as well. Thus, patent applications naming a machine as either an inventor or joint inventor will be considered by the Patent Office to have improper inventorship.

AI-assisted Inventions May Be Patentable: Next, the guidance explains that the Patent Office will not treat the inability to list an AI system as an inventor as rendering an AI-assisted invention unpatentable per se, as long as one or more natural persons “significantly contributed” to the invention. It asserts that this position is supported by statute and court decisions, as well as policy considerations to incentivize AI-assisted inventions and not hinder human innovation.

Naming Inventors for AI-assisted Inventions: In its most substantial section, the guidance addresses how the Patent Office will identify inventors for AI-assisted Inventions. The Patent Office will apply the Pannu factors, which are generally applicable to joint inventors, to make this determination. See Pannu v. Iolab Corp., 155 F.3d 1344, 1351 (Fed. Cir. 1998). Thus, each inventor must make a significant contribution to the conception of the invention—not just its reduction to practice—and at least one inventor must have recognized and appreciated the invention. When assessing this question during prosecution, the Patent Office will employ a claim-by-claim analysis. This follows from its interpretation of Section 115, which requires all patent applications to name the inventor of “any invention claimed.” Notably, if no natural person significantly contributed to an invention, the Patent Office will reject that invention under Sections 101 and 115.

To assist applicants and Patent Office personnel, the guidance provides a non-exhaustive list of principles to consider when assessing whether a person is an “inventor” of an AI-assisted invention. For example:

  • Presenting a problem, general goal, or research plan to an AI system may not be enough, but a person who constructs the prompt in view of a specific problem to elicit a particular solution may be a proper inventor;
  • Recognizing and appreciating the AI system’s output is not necessarily enough, but a person who makes a significant contribution to that output or conducts a successful experiment using the output may be a proper inventor;
  • Contributing a necessary building block from which the claimed invention is derived, like designing, building, or training the AI system in view of a specific problem to elicit a particular solution, might be enough; and
  • Owning or overseeing the AI system used in the creation of an invention, alone, is not enough.

The Patent Office has also posted examples online to help the public and examiners apply the guidance in specific situations: http://www.uspto.gov/initiatives/artificial-intelligence/artificial-intelligence-resources.

Other Patent Practice: In this section, the guidance addresses various aspects of practice before the Patent Office as applied to AI-assisted inventions, including noting that the guidance applies to all forms of patents (utility, design, plant). But almost uniformly, the guidance does not propose any changes to practice before the Patent Office, only pointing out how various aspects still apply in the AI-assisted context. There are two possible exceptions worth noting. First, the guidance reasons that because an AI system cannot be a named inventor, it has no rights to assign an invention, at least for purposes of assignment recordings at the Patent Office. Second, the guidance clarifies that, when claiming priority to a foreign application, a U.S. application must name all natural-person inventors only—even if the foreign country would allow an AI inventor.

Takeaway: The Patent Office’s newly issued guidance adopts a policy that AI-assisted inventions are patentable, as long as a natural person makes a significant contribution to the invention under Pannu. Public comments are due by May 13, 2024, after which the Patent Office may issue further guidance, modify the current guidance, or issue additional examples.