The United States Patent and Trademark Office (USPTO) has issued new guidance for inventions assisted by artificial intelligence (AI). While AI-assisted inventions are not categorically unpatentable, the analysis for patentability focuses on the extent of human contributions. Patent protection is possible when a natural person has made a significant contribution to the invention. Each claim in a patent application must have at least one natural person significantly contributing to it; otherwise, inventorship is considered improper.
Overview of USPTO Guidance
On February 13, 2024, the USPTO issued guidance for AI-assisted inventions, detailed in 89 FR 10043. This guidance emphasizes the importance of human contributions in the inventorship analysis, applying to utility, plant, and design patents and applications. The key takeaway is that natural persons who significantly contributed to the invention must be named as inventors or joint inventors.
Criteria for Naming Inventors
In patent applications and patents for AI-assisted inventions, the natural person(s) who significantly contributed to the invention must be named as the inventor(s). The use of AI by a natural person does not disqualify that person from being recognized as the inventor, provided they significantly contributed to the claimed invention. Conversely, no entity that is not a natural person can be listed as an inventor or joint inventor, even if an AI system played a crucial role in creating the invention.
Significant Contribution Requirement
Each inventor must provide a "significant contribution" to the invention, known as the "Pannu factors." These factors help determine whether an individual's contribution qualifies them as an inventor:
- Contribution to Conception or Reduction to Practice: An inventor must significantly contribute to the conception or reduction to practice of the invention. This means they must have a substantial role in forming the definite and permanent idea of the complete and operative invention as it is applied in practice. Simply reducing to practice an invention conceived by someone else does not suffice for inventorship.
- Quality of Contribution: The contribution to the claimed invention must be significant in quality when measured against the dimension of the full invention. For instance, providing routine inputs to an AI system may be considered an exercise of normal skill and thus insignificant in quality.
- Beyond Explanation: The inventor must do more than merely explain well-known concepts or the current state of the art to the actual inventors. They must contribute in a meaningful way that advances the invention beyond existing knowledge.
Practical Implications
For each claim in a patent application to be valid, it must have at least one natural person who meets these criteria as an inventor. If any of these factors are not met by a person, that person cannot be named as the inventor. This ensures that all named inventors have made a significant and substantive contribution to the creation of the invention.
Ensuring Compliance
To comply with these guidelines, applicants should carefully document the contributions of each person involved in the invention process. This documentation should clearly delineate how each individual's input meets the significant contribution requirement. By doing so, applicants can ensure that their patent applications are robust and meet the USPTO's standards for inventorship.
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