AI Inventors and Patent Applications

Artificial Intelligence (AI) is rapidly transforming the landscape of innovation, raising pivotal questions about the eligibility of AI-generated inventions for patent protection. As AI systems increasingly contribute to the creation of novel and useful inventions, it becomes essential to understand the legal frameworks governing these developments. In the United States, the eligibility of AI-generated inventions for patent protection depends on the extent of human contribution to the conception of the invention. This section delves into the evolving discourse on whether and how inventions autonomously generated by AI can be patented, examining key legal precedents, policy considerations, and the implications for patent attorneys, inventors, and businesses.

This page is divided into these parts:

The Thaler Decision--AI Inventing Alone

AI Inventor The case of Thaler v. Vidal centers on the fundamental question of whether an artificial intelligence (AI) system can be listed as an inventor on a patent application. Stephen Thaler, a pioneer in AI, developed a system known as DABUS (Device for the Autonomous Bootstrapping of Unified Science) which he claimed independently generated two inventions without human intervention. Thaler filed patent applications for these inventions, listing DABUS as the sole inventor. The United States Patent and Trademark Office (USPTO) rejected these applications on the grounds that a machine cannot be recognized as an inventor under the current patent laws. Thaler challenged this decision, leading to a significant legal battle over the interpretation of the term “inventor” in Section 100 of Patent Act.

The Federal Circuit Court ultimately upheld the USPTO’s decision, affirming that under the Patent Act, an “inventor” must be a natural person. The court’s reasoning was grounded in the statutory language of the Patent Act, which consistently refers to inventors as “individuals,” a term that is legally understood to mean human beings. This decision reinforces the traditional view that patent rights are inherently tied to human creativity and oversight.

In reaching its decision, the Federal Circuit considered several key arguments presented by Thaler and the USPTO. Thaler argued that denying AI systems the status of inventor could stifle innovation and fail to acknowledge the growing role of AI in the inventive process. He maintained that AI systems like DABUS could independently generate patentable ideas, and excluding them from inventorship would disregard significant technological advancements. Thaler also contended that the statutory interpretation of “inventor” should evolve to reflect these technological changes.

The court, however, adhered to a strict interpretation of the Patent Act, emphasizing that the language of the statute was unambiguous in its reference to inventors as natural persons. The court noted that while AI could assist in the inventive process, the ultimate conception of an invention must involve human intellect and creativity. The decision underscored the necessity of a human element in the inventive process, which aligns with the broader legal and ethical frameworks governing intellectual property.

By establishing these principles, the Thaler decision provides crucial clarity on the role of AI in the patent landscape. Under this decision, AI cannot replace the human element that is central to the concept of inventorship under current U.S. law. This does not mean, of course, that AI cannot invent useful inventions. It only means that the Patent Act cannot be used to secure patent protection on any inventions, no matter how advanced, when the invention was made by the AI without human ingenuity.

USPTO Inventorship Guidance for AI-Assisted Inventions--AI as a Co-Inventor

AI Inventor On February 13, 2024, the USPTO issued its Inventorship Guidance for AI-Assisted Inventions. This guidance addresses the issue of inventorship for AI-assisted inventions and reaffirms the Thaler decision’s requirement that human involvement is essential in the patent process. This guidance clarifies that AI-generated inventions can be patented, but only when there is significant human contribution to the inventive process.

The USPTO’s guidance emphasizes that while AI can play a critical role in generating inventive ideas, a natural person must have made a substantial contribution to the conception of the claimed invention. This principle ensures that the legal requirements for inventorship are met without stifling innovation that leverages AI technologies. The guidance includes practical examples and case studies to illustrate various scenarios in which human inventors use AI tools, helping stakeholders navigate the complexities of AI-assisted patent applications.

According to the USPTO, an inventor must contribute in a significant manner to the conception of the invention, which is defined as more than merely explaining well-known concepts or the current state of the art. The contributions must be substantial and integral to the invention’s conception, not just its reduction to practice. Conception refers to the formation of a complete and operative idea of an invention in the inventor’s mind. In contrast, the reduction to practice involves taking the necessary steps to physically demonstrate or construct the invention based on that idea. The guidance specifies that recognizing a problem or having a general research plan does not meet the criteria for inventorship. Instead, the contributions must be concrete and specific to the inventive concepts embodied in the patent claims.

Furthermore, the USPTO incorporates the Pannu factors to assess inventorship. These factors (based on the Federal Circuit's decision in Pannu v. Iolab Corp.) include whether the individual contributed in a significant manner to the conception of the invention, whether their contribution is not insignificant in quality when measured against the full invention, and whether their role goes beyond merely explaining well-known concepts or the current state of the art. Applying these factors ensures that the contributions are meaningful and integral to the inventive process, reinforcing the necessity of human ingenuity in patentable inventions.

The USPTO guidance also sets forth five guiding principles to help determine when an AI-assisted invention can be patented:

  1. Human Contribution: Using an AI system to create an invention does not disqualify a person from being an inventor. The person can be listed as the inventor if they significantly contribute to the creation of the invention.
  2. Conception vs. Problem Recognition: Simply recognizing a problem or having a research goal is not enough to be considered an inventor. If a person only identifies a problem for the AI to solve, they are not necessarily the inventor. However, if a person creates detailed prompts that guide the AI to a specific solution, their contribution can be significant enough to qualify as inventorship. Ideally, one should be able to identify the contribution to the invention in the prompt's themselves.
  3. Reduction to Practice: Just building or demonstrating an invention is not enough to be an inventor. Recognizing the AI's output as an invention is also not sufficient. However, if a person takes the AI's output and significantly improves or modifies it, they may be considered an inventor of that improvement or modification. Additionally, conducting successful experiments with the AI's output can sometimes show significant contribution.
  4. Essential Contributions: A person who develops a crucial element that the invention is based on can be considered an inventor, even if they were not involved in every step. For example, designing or training the AI system to solve a specific problem can be a significant contribution if it leads to the invention at a later time. Note that this does not mean that the trainer of a general purpose generative AI system will be considered the inventor of inventions created by the generally trained AI system. Rather, this principles applies only if the system was designed or trained with the purpose solving a specific problem.
  5. Intellectual Domination: Simply having control over an AI system does not make someone an inventor. Ownership or oversight of the AI is not enough without a significant contribution to the creation of the invention.

USPTO Examples

The USPTO provided two examples to help illustrate the application of its inventorship guidance. The first example involves a hypothetical scenario with the XYZ Toy Company. Ruth and Morgan, engineers at XYZ, use a generative AI system called Puerto5 to design a transaxle for a remote control (RC) car. They provide a general prompt to Puerto5: “Create an original design for a transaxle for a model car, including a schematic and description of the transaxle.” Puerto5 outputs a preliminary design, which Ruth and Morgan review and then decide is suitable for their RC car.

In the first scenario, XYZ prepares a patent application that includes a claim to the transaxle designed by Puerto5. The USPTO analyzes whether Ruth and Morgan are proper inventors of this claim. The analysis, based on the second guiding principle of the USPTO’s inventorship guidance, concludes that merely recognizing a problem (the need for a transaxle) and providing a general prompt to the AI does not constitute a significant contribution to the conception of the invention. Ruth and Morgan did not alter the AI’s output or provide any inventive input beyond the initial prompt. As such, they do not meet the criteria for inventorship under the Pannu factors, which require a significant contribution to the conception of the invention. Consequently, Ruth and Morgan are not considered proper inventors of the transaxle claim.

In the second scenario, Morgan builds the transaxle exactly as designed by Puerto5 and chooses steel for the casing, a common material in the RC car industry. A dependent claim is added to the patent application specifying the casing material. The USPTO concludes that Morgan is not a proper inventor of this claim either. According to the third guiding principle, simply reducing the invention to practice (building the transaxle) or recognizing the AI’s output as an invention is insufficient for inventorship. Morgan’s choice of material, while practical, does not amount to a significant inventive contribution. Therefore, Morgan’s involvement does not meet the necessary criteria for inventorship.

The second example provided by the USPTO involves researchers at the University of Cancer Research (UCR) using an AI system called the Drug Target Interaction Predictor (DTIP) to develop a drug for prostate cancer. Lauren, a data scientist, was responsible for training the DTIP. Marisa, a professor, and Raghu, an AI expert, use DTIP to identify candidate drug compounds. Under the direction of Marisa, Raghu provided input to DTIP by converting 20,000 compounds into standard ASCII string representations. Marisa identified the most likely drugs from the output, and, along with Naz (a postdoctoral fellow), synthesizes and modifies these compounds, leading to the creation of a novel therapeutic compound, CID_1-mod.

This second example provides two distinct scenarios. In the first scenario, Marisa and Naz use DTIP to identify and modify drug compounds. They select the top compounds, synthesize them, and introduce structural modifications to improve their efficacy. The example then analyzed two claims. The first claim involves identifying and synthesizing a lead drug compound using a pre-trained DNN, identifying compounds with high binding affinity, and modifying them for improved efficacy. Marisa and Naz are joint inventors under the USPTO guidance since they significantly contributed to the conception by using DTIP, and then synthesizing and modifying the compounds. The second claim covers the specific structure of the synthesized compound. Both Marisa and Naz will be considered inventors for the novel compound as their contributions were essential to its creation. Neither Lauren's training of the DTIP system, nor Raghu's provision of inputs into DTIP were considered sufficiently significant.

In the second scenario, Raghu builds and trains a new AI system, and Marisa identifies and synthesizes a novel compound based on the AI’s outputs. The new AI system included three stages of processing, including a unique "scalar objective function" based on a design by Marisa. The single claim covers the specific structure of the novel compound. Raghu and Marisa were both considered inventors for the novel compound due to their combined work in developing the new AI system that identified the compound. This was based on an application of the fourth guiding principle in the guidance, where the design and training of an AI system designed to solve a specific problem can be sufficient for inventorship.

Practical Implications for Patent Attorneys

As long as there is significant human contribution to the invention, it is permissible to file for patent protection on AI-assisted inventions. The application should be filed with the human inventor named as the inventor. The AI system that assisted with the invention is not considered an “inventor” because it is not human. Therefore, the AI system should not be named as an inventor on the patent application.

Rule 56 mandates that applicants and attorneys disclose all information known to them that is material to the patentability of their invention. One critical issue under the new USPTO guidelines is ensuring that all claims in an application have a human inventor. If there are any previously filed claims where all significant aspects of the invention were invented solely by AI (no significant human contribution to conception), this must be disclosed under Rule 56. However, it is not necessary to disclose all instances of AI involvement, only those that impact the inventorship and patentability of the claimed invention. If a claimed invention includes both AI-contributed elements and a significant human contribution, the AI involvement need not be disclosed.

All patent attorneys need to inquire about the inventors for a newly filed patent application. Under the new guidelines, Rule 56 likely requires further inquiry into the role of any AI assistance in the inventive process. Attorneys should inquire about how AI was used, the extent of its involvement, and the specific contributions of human inventors. This additional inquiry helps to confirm that human inventors have made substantial contributions to the conception of the invention, as required by the new USPTO guidelines.

Alternatively, a patent attorney can file a patent application in which the claims do not have any human inventor in order to challenge the legality of the new guidelines. While such actions to expand the scope of patent protection and challenge the USPTO’s guidelines are permissible, Rule 56 likely requires disclosure of these facts to the Patent Office upon filing.

Practical Implications for Inventors and Businesses

The USPTO guidance on AI-assisted inventorship makes it clear that inventions lacking a human co-inventor are ineligible for patent protection. This decision underscores a significant limitation: valuable and potentially groundbreaking inventions created entirely by AI systems without meaningful human input cannot be patented. This leaves a gap where innovative outputs of AI may remain outside the realm of patent protection, potentially discouraging certain types of AI-driven research and development.

Note that this resolution was not a foregone conclusion when the PTO first considered the issue of AI-assisted inventions. Alternative approaches were considered but ultimately rejected by the USPTO. One such approach proposed that the creator or trainer of the AI system should be recognized as the inventor. This would have acknowledged the significant effort and ingenuity involved in developing and training sophisticated AI systems. However, the USPTO maintained that inventorship must be directly tied to the conception of the invention itself, not the tools or systems used to generate it. Another rejected approach suggested that the company owning and using the AI system for research should be named the inventor. This would have allowed corporations to leverage their AI investments more directly in securing intellectual property rights. However, this concept conflicts with the fundamental principle that inventors must be natural persons under the Patent Act. A further alternative was that the person submitting prompts to the AI should always be considered the inventor. This idea recognizes the role of human guidance in directing AI outputs. Nevertheless, the USPTO determined that merely providing prompts, without significantly shaping the inventive concept, does not meet the threshold for inventorship. These rejected alternatives highlight the challenges in adapting traditional patent frameworks to accommodate the rapidly evolving capabilities of AI.

This guidance has introduced a new requirement for inventors and inventive companies to maintain documentation of human participation in the inventive process whenever AI systems were used. This includes maintaining records that demonstrate how humans contributed to the conception of the invention, as opposed to merely executing or recognizing the output generated by an AI system. Such records might encompass meeting notes, design and development documents, prompt logs, and an overall description of the problem-solving process. In future litigation, this documentation may prove critical because it provides tangible evidence of human ingenuity and intervention, which are key criteria for patent eligibility. By clearly delineating human contributions, inventors can preemptively address potential challenges to their inventorship claims, ensuring that their patent applications comply within the requirements of these new guidelines.

The issue of whether an invention contained significant human contribution is likely to become a focal point in legal challenges to issued patents. As the USPTO’s guidance takes hold, these challenges may become as common as those based on section 101, which deals with the eligibility of subject matter for patent protection. Litigants may scrutinize the documented human contributions to argue that the claimed invention lacks the necessary human involvement, potentially rendering the patent invalid. Consequently, robust documentation practices are not only essential for securing patent approval but also for defending the validity of patents in future legal disputes.

It is important to note that these are only USPTO guidelines and not binding legal standards. The Federal Circuit will likely approach this issue afresh when it appears before them, meaning the guidelines are temporary and may be replaced by a Federal Circuit decision in the relatively near future. This also implies that rejections made by the PTO under these guidelines would be eligible for appeal to the Federal Circuit, where the validity and application of these guidelines can be challenged.

Artificial Intelligence (AI) Patent Attorney

Please see Dan Tysver's bio and contact information if you need any AI-related legal assistance. Dan is a Minnesota-based attorney providing AI advice on intellectual property and litigation issues to clients across the country.