Guest Perspective: How does Artificial Intelligence impact inventorship? US Patent and Trademark Office issues new guidelines.

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Artificial Intelligence (AI) is a powerful and useful technology, but its widespread and rapid acceptance in many fields has raised a lot of unanswered questions, particularly where intellectual property is involved. While many unanswered questions remain, the United States Patent and Trademark Office (USPTO) has recently taken steps to provide guidance pertaining to AI and inventorship.

In 2022, the Federal Circuit ruled that an inventor had to be a natural person. While this decision only relates to a sole AI inventor, its reasoning could easily be applied to a joint inventor. As such, whether and to what extent AI could contribute to an invention had been left unanswered, until now.

The USPTO has provided guidance that requires (1) that a human inventor contribute to the conception of the invention and (2) that there must be a significant contribution by the human inventor. What makes a contribution significant? The USPTO guidance relies on a pre-existing test for joint inventorship in general, i.e., the Pannu test. The Pannu test requires that to be considered a significant contribution, an inventor must contribute to the conception of the invention, the contribution must not be insignificant when measured against the dimension of the invention as a whole, and the inventor must contribute more than a mere explanation of well-known concepts or the current state of the art.

USPTO guidance on AI and inventorship is governed by its five guiding principles:

1. A person’s use of AI in creating an invention does not preclude them from being an inventor as long as their contribution is significant.
2. Merely recognizing a problem and asking AI to solve it does not make one an inventor; however, skilled construction of an AI prompt to achieve a solution can be considered a significant contribution.
3. Reduction to practice of an AI-created invention alone is not enough to be considered an inventor, but if a significant contribution to AI output is needed to reduce the invention to practice that can support a claim to inventorship.
4. Contributing to an essential building block to an AI system, for example designing, building, or training AI, could be considered a significant contribution to an invention created with that system.
5. Maintaining, owning or overseeing an AI system without any significant contribution to the system or its output is not inventorship.

So, what does this mean for inventors and applicants and their representatives before the USPTO? The USPTO’s guidance clarifies that these parties’ duties to the USPTO have not changed. Specifically, the duty of disclosure, candor, and good faith still applies, but likely now requires additional steps. The duty to disclose all information material to patentability has always included a duty to disclose information pertinent to inventorship because inventorship is material to patentability. However, inventorship disclosure may now also include disclosure about whether and to what extent AI was used for the conception of the invention. Concomitantly, the duty includes a duty to disclose information known to the practitioner or patent applicant as well as a duty to perform a reasonable inquiry. As such, inquiries about inventorship should likely also include inquiries about AI and how it may have contributed to the subject invention.

Of note, the USPTO has also provided working examples of how these guiding principles and factors may look in actual practice. For a closer look at these examples and other USPTO Artificial Intelligence Resources, visit the USPTO website here.

Nonetheless, inventorship is only one aspect of patentability that may be affected by the rapid growth and widespread use of AI. Therefore, we can look forward to future guidance on how AI affects Subject Matter Eligibility, Obviousness, and Enablement. Similarly, we can soon expect further guidance from the Copyright Office on how AI affects authorship of creative works.

Author Mackenzie Rodriguez is a member of Stone Pigman’s Intellectual Property Practice Group.