AI Implemented Invention Tips Following USPTO Guidance

• Published date: 28 February 2024
• Subject Matter: Intellectual Property, Technology, Patent, New Technology
• Law Firm: Manatt, Phelps & Phillips LLP
• Author: Timothy Lohse

The United States Patent and Trademark Office (USPTO) and the Court of Appeals for the Federal Circuit have both previously held that an artificial intelligence (AI) system cannot be a sole inventor on a patent application since each inventor must be a human being.¹ The question of how inventions that were at least partially implemented using an AI system would be treated was left unanswered by these holdings.

The USPTO recently issued its "Inventorship Guidance for AI-Assisted Inventions".² The USPTO Guidance confirms that AI cannot be an inventor, and each inventor of an AI implemented idea must be a human being who significantly contributed to at least one patent claim.³ The "significant contribution" by each human being raises questions about how much AI can be used to develop a new AI assisted idea for which patent protection is sought. If the AI system is too involved and the human inventor did not "significantly contribute," then no patent can be granted for the idea.

The USPTO has provided some guiding principles about whether a human being's contribution to an AI-assisted invention is significant.⁴ Those guiding principles are:

• A human being's use of an AI system to create an AI-assisted invention does not negate the person's contribution as an inventor (with the USPTO citing Shatterproof Glass Corp v. Libbey-Owens Ford Co., 758 F.2d 613, 624 (Fed. Cir 1985).⁵
• A natural person that only presents a problem to an AI system may not be a proper inventor or joint inventor of an invention identified from the output of the AI system.⁶
• A significant contribution by a natural person could be shown based on a prompt created by the natural person to elicit a particular solution from the AI system.⁷
• A natural person who merely recognizes and appreciates the output of the AI system as an invention may not be an inventor.⁸
• A person who conducts a successful experiment using the AI system's output could demonstrate that the person provided a significant contribution.⁹
• In some situations, a natural person who designs, builds or trains an AI system in view of a specific problem to elicit a particular solution could an in inventor.¹⁰
• A person simply owning or overseeing an AI...