03/01/2024 | News release | Distributed by Public on 03/01/2024 15:40
The U.S. Patent and Trademark Office (USPTO) has issued guidance regarding patentability and inventorship for inventions made with the assistance of artificial intelligence (AI), clarifying the Office's position that such inventions are patent-eligible so long as at least one human inventor made a significant contribution to conception of the invention.
In addition to announcing its view that AI-assisted inventions may be patent-eligible, the USPTO provided several guiding principles that it believes should inform determinations as to whether and when a human should be considered an inventor when using AI assistance. Finally, the USPTO provided two detailed examples to guide examiners, practitioners, and inventors in determining inventorship for AI-assisted inventions.
Background
The Federal Circuit's 2022 decision in Thaler v. Vidal, 43 F.4th 1207 (Fed. Cir. 2022) established that only a human inventor-not an AI system-can be validly named as an inventor on a U.S. patent application. Thus, under Thaler, inventions that are invented entirely by AI systems are not eligible for U.S. patent protection. However, the Thaler court explicitly acknowledged that its decision did not confront the more nuanced question of "whether inventions made with the assistance of AI are eligible for patent protection." Thaler v. Vidal, 43 F.4th at 1213.
Following the Thaler decision, the Biden administration's AI Executive Order directed the USPTO director to weigh in on the very issue flagged as unresolved by the Thaler court. The AI Executive Order of Nov. 1, 2023, charged the USPTO director to "publish guidance to USPTO patent examiners and applicants addressing inventorship and the use of AI, including generative AI, in the inventive process." Executive Order 14110, Safe, Secure, and Trustworthy Development and Use of Artificial Intelligence,88 Fed. Reg. 75191-75226 (Nov. 1, 2023).
The USPTO has now issued that guidance (Inventorship Guidance for AI-Assisted Inventions, 89 Fed. Reg. 10043-10051 (Feb. 13, 2024)) and is seeking public comment on it for a 90-day period.
USPTO Position: Significant Human Contribution to Conception Is Required
The standard endorsed by the USPTO in its guidance for AI-assisted inventions is the following: "While AI systems . . . cannot be listed as inventors on patent applications or patents, the use of an AI system by a natural person(s) does not preclude a natural person(s) from qualifying as an inventor (or joint inventors) if the natural person(s) significantly contributed to the claimed invention." 89 Fed. Reg. at 10046.
Critically, significant contribution to an invention requires significant contribution to the conception of the invention. Traditionally, conception is defined as the formation of an invention in the mind of an inventor. Conception is distinct from reduction to practice, which involves the processes of actual construction, successful testing, validation, or demonstrating an invention's workability. While reduction to practice may occur simultaneously with conception in some situations, significant contribution to reduction to practice alone is not enough for a human contributor to be an inventor if the human contributor did not contribute in any significant manner to conception.
Pannu Factors
To determine whether a human inventor has made a significant contribution to the conception of an invention, the USPTO looks to the Federal Circuit's Pannu factors. (See Pannu v. Iolab Corp., 155 F.3d 1344, 1351 (Fed. Cir. 1998).) While the Pannu factors were promulgated by the Federal Circuit with respect to determining inventorship among multiple human contributors, the USPTO guidance says that these factors should apply similarly in determining inventorship among cooperative human and AI contribution.
The Pannu factors provide the following requirements of an inventor: ". . . (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." Id. at 1351 (citing to Fina Oil Chem. Co. v. Ewen, 123 F.3d 1466, 1473, 43 USPQ2d 1935, 1941 (Fed. Cir. 1997); and Ethicon, Inc. v. United States Surgical Corp., 135 F.3d 1456, 1460, 45 USPQ2d 1545, 1548 (Fed. Cir. 1998)) (emphasis added).
Principles for Applying Pannu Factors
In addition to invocation of the Pannu factors, the USPTO provided several "principles" that it says should inform application of the Pannu factors in situations where AI is leveraged to assist in creation of an invention. These principles articulated in the USPTO guidance include the following:
89 Fed. Reg. at 10048-10049 (emphasis added).
Human Inventorship Is Determined Claim by Claim
Consistent with the principle that inventorship among multiple human inventors is determined on a claim-by-claim basis, the USPTO guidance sets forth that human inventorship for AI-assisted inventions is also determined on a claim-by-claim basis.
The most interesting implication of this claim-by-claim principle with respect to AI-assisted inventions is that each claim must have a valid human inventor. As set out in some detail in the examples provided by the USPTO with its guidance, the implications for dependent claims are somewhat interesting. For example, a dependent claim that recites a minor contribution made entirely by AI may still be included in an application, so long as the underlying independent claim has a valid human inventor who made a significant contribution to the conception of the overall inventive concept.
Other Guidance Notes
Other points in the USPTO guidance that may be of interest to inventors and practitioners include the following:
USPTO AI-Assisted Invention Examples
In addition to the guidance memorandum itself, the USPTO also provided two detailed examples, outlining how it believes its AI-assisted invention principles should be applied. The first example explores situations in which a publicly available generative AI system is used to create a transaxle design for a remote-control car. The second example explores situations in which a ready-to-use deep neural network (DNN) prediction model is used, sometimes in combination with bespoke generative AI models, in discovery and development of therapeutic compounds.
A brief summary of the USPTO examples is provided below.
Example 1 - Transaxle for a remote-control car
In this example, toy car engineers prompt a publicly available generative AI system to create a transaxle design: "Create an original design for a transaxle for a model car, including a schematic and description of the transaxle."
Example 2 - Developing a therapeutic compound for treating cancer
In this example, drug researchers use a ready-to-use DNN prediction model to select candidate compounds for cancer treatment. The researchers provide drug-target pairs as input in Simplified Molecular Input Line Entry System (SMILES) string format, and the prediction model outputs candidate compounds with the highest predicted binding affinity.
While the examples outline certain situations in which human beings have not made any significant contribution to the conception of a claimed invention, and therefore cannot be listed as valid inventors, the examples seem overall (particularly with respect to the second example relating to AI-assisted drug discovery) to seek to provide pathways by which inventors, practitioners, and examiners can establish valid human inventorship. The examples, however, still leave significant uncertainty as to what amount of human contribution is required to establish valid human inventorship. Notably, Example 2 is silent on any scenarios in which structural modifications are not made to a candidate compound identified or generated by a ready-to-use AI system, which may signal a scenario in which proper human inventorship of a claim to such a compound could be challenged.