On February 12, 2024, the U.S. Patent and Trademark Office (USPTO) announced guidance and comments on the eligibility of inventors for artificial intelligence (AI)-assisted inventions (the "AI Guidance"). The AI guidance, which came into effect on February 13, 2024, emphasizes that AI-assisted inventions are not classified as non-patentable, and that the inventor eligibility analysis "should focus on human contributions, as the function of patents is to stimulate and reward human creativity."
Key points:The main takeaways of AI guidance are as follows, with further details below:
An AI system cannot be an inventor.
The use of AI systems does not eliminate human inventorship qualifications.
A natural person using an AI system is an inventor if the natural person has made a "significant contribution" to the process of the invention, applies the criteria for the qualification of a joint inventor, and knows and appreciates the invention.
Each claim of a patent must have a human inventor.
Background:The U.S. Patent and Trademark Office and the Federal Circuit have previously confirmed that AI systems cannot be inventors under current U.S. law. For example, the Federal Circuit Court said in a 2023 case that "only a natural person can be an inventor, and therefore AI cannot be an inventor." However, as the AI guidance emphasizes, these decisions do not completely exclude natural persons who use AI in the invention process. Through a series of solicitations and public meetings, the USPTO received input from stakeholders on how to evaluate AI-assisted inventions. These comments, as well as recent executive orders on AI-related innovations, have been incorporated into the AI guidance.
Overview of AI Guidance:The AI Guidance explains the threshold issue when assessing the inventor qualifications of an AI-assisted invention, i.e., determining whether a natural person has made a "significant contribution" to the claimed invention. Historically, courts have applied the PANNU factor to assess co-inventor eligibility, which assesses whether a co-inventor is:
1) "Contribute to the idea or practice in some significant way; ”
2) in "the contribution to said invention is qualitatively not negligible within the scope of the comprehensive invention, when the contribution is compared with the dimension of the comprehensive invention; Moreover.
3) More than just someone who explains a known concept or prior art.
The guidance explains the relevance of the PANNU factor in the context of AI-assisted inventions, and that "a natural person who creates an invention using an AI system must have made a significant contribution to the invention in accordance with the PANNU factor".
In addition, the AI Guidance explains that each claim must have at least one natural person who has made a significant contribution to the invention and who "recognizes and appreciates" the invention.
To assist examiners and the public in applying the PANNU factor, the guidance sets out five non-exhaustive principles:
Artificial intelligence is allowed:"The use of an AI system by a natural person in the creation of an AI-assisted invention does not diminish his or her contribution as an inventor. If a natural person has made a significant contribution to an AI-assisted invention, they can be listed as an inventor or co-inventor. ”
It's not enough to just recognize the problem:"Merely recognizing the problem or having a general goal or research plan does not constitute the extent of the idea. A natural person who asks merely a question to an AI system may not be an inventor or co-inventor. However, the way in which prompts are constructed in the context of a specific problem to guide the AI system to produce a specific solution may show significant contributions. ”
Practical reduction is not enough:"The practical implementation of an invention alone is not a significant contribution to achieving inventorship. Therefore, a natural person who merely recognizes and appreciates the output of an AI system as an invention, especially when the attributes and usefulness of that output are obvious to a person of ordinary technical ability, is not necessarily the inventor. However, a person who takes the output of an AI system as part of the invention and makes a significant contribution to the output to create the invention may be a suitable inventor. Or, in some cases, people who conduct successful experiments using the output of an AI system may prove that they have made a significant contribution to the invention, even if those people are unable to build an idea until the invention is put into practice. ”
It may be sufficient to develop important foundational modules:"If a natural person develops an important foundational module and the claimed invention derives from this module, the person may be considered to have made a significant contribution to the conception of the claimed invention, even if he was not involved in every activity that gave rise to the claimed inventive idea." In some cases, a natural person who designs, builds, or trains an AI system to solve a specific problem and leads to a specific solution may be an inventor, where the design, construction, or training of an AI system constitutes a significant contribution to the invention created using that system. ”
Owning or supervising an AI system is not sufficient:"Merely maintaining 'intellectual domination' over an AI system does not make a person an inventor of any invention created through the use of that AI system. Therefore, merely owning or supervising an AI system used in the creation of an invention and not making a significant contribution to the conception of the invention does not make that person an inventor. ”
The U.S. Patent and Trademark Office has also published two examples of the application of these factors – one involving the transmission of a remote car, and the other involving the sexual compounds of cancer. Each example highlights that while an AI cannot be an inventor per se, a natural person who uses an AI in the process of invention can be identified as an inventor as long as he or she has made a "significant contribution" and has recognized and appreciated the invention.
Conclusion:The AI guidance, which went into effect on February 13, 2024, provides information on how the USPTO assesses the eligibility of inventors for AI-assisted inventions. The USPTO invited stakeholders to comment on the guidance by May 13, 2024, and indicated that it would revise or issue new guidance related to inventorship and artificial intelligence in light of legal and technological developments. Industry participants should consider providing input on this guidance and continue to monitor developments in this area.