USPTO Publishes Guidance Allowing Use of AI to Derive an Invention if a Human "Significantly Contributed" to It

Artificial intelligence (AI) cannot be named as an “inventor” in a U.S. patent application, but it can be used as a tool to derive an invention sought to be patented, if a human being “significantly contributed” to that derivation. This principle, and the new need for AI-related dialogue between inventors and their patent counsel, emerge as the main takeaways from guidance recently published by the United States Patent and Trademark Office (USPTO).

On February 13, the USPTO published its “Inventorship Guidance for AI-Assisted Inventions” ("the Guidance") fulfilling an obligation imposed by an October 30, 2023 executive order from President Biden. That executive order required the USPTO to, within four months, “publish guidance to USPTO patent examiners and applicants addressing inventorship and the use of AI, including generative AI, in the inventive process, including illustrative examples . . . .” The USPTO therefore also published “Example 1,” applying the Guidance principles to a hypothetical mechanical invention, and “Example 2,” applying those principles to a hypothetical pharmaceutical invention.

Any written comments concerning the Guidance must be received by May 13, 2024 through accessing the Federal eRulemaking Portal, and by entering Docket No. PTO-P-2023-0043 to associate entered comments with the Guidance. Although the Guidance stresses that it “does not constitute substantive rulemaking and does not have the force and effect of law,” it does reflect the USPTO's policy concerning its "interpretation of the inventorship requirements of the Patent Act in view of" Supreme Court and Federal Circuit case law.

The prohibition against naming AI as an inventor echoes the Federal Circuit's decision in Thaler v. Vidal (2022). As noted in the Guidance, however, the Federal Circuit in Thaler “was not confronted with ‘the question of whether inventions made by human beings with the assistance of AI are eligible for patent protection.’” The Guidance answers this question with a qualified “yes,” providing five principles listed below.

1. No Blanket Prohibition Against AI Use, but “Significant Contribution” by Human Required.  A “natural person can be listed as the inventor or joint inventor if the natural person contributes significantly to the AI-assisted invention.”  A determination of whether the natural person made a “significant contribution" is fact-dependent, but the remaining principles, and the two Examples applying them, provide some guidelines to assist with that determination.
2. Mere Recognition of a Problem is Not a “Significant Contribution.” “A natural person who 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.” However, the construction of an AI prompt to address a more specific problem could be deemed a “significant contribution.”
3. Merely Reducing an AI Output to Practice is Not a “Significant Contribution.” Under patent law precedent: “In order to establish actual reduction to practice, the inventor must prove that he constructed an embodiment or performed a process that met all the limitations of the claim, and that he determined that the invention would work for its intended purpose.” But reduction to practice, by itself, is not enough to attain inventorship status. “Therefore,” under the Guidance, “a natural person who merely recognizes and appreciates the output of an AI system as an invention, particularly when the properties and utility of the output are apparent to those of ordinary skill, is not necessarily an inventor.” If, however, a natural person “makes a significant contribution to the [AI's] output,” then that person may be a proper inventor.
4. Training of a Focused AI System May Suffice. “In some situations, the natural person(s) who designs, builds, or trains an AI system in view of a specific problem to elicit a particular solution could be an inventor, where the designing, building, or training of the AI system is a significant contribution to the invention created with the AI system.”
5. Mere Ownership of, or Dominion Over, an AI System is Not a “Significant Contribution.”  “[A] person simply owning or overseeing an AI system that is used in the creation of an invention, without providing a significant contribution to the conception of the invention, does not make that person an inventor.”

Beyond the above five principles, the Guidance provides two other important takeaways.

First, a “significant contribution” from at least one human is required for every single claim in a patent application. Therefore, if any claim recites an AI-assisted invention that lacked a human's “significant contribution,” that claim will be held invalid under Sections 101 and 105 of the Patent Act.

Second, the Guidance imposes new obligations upon patent counsel to inquire about the client's use of AI, if any, in deriving the invention sought to be patented. “Given the ubiquitous nature of AI, this inventorship inquiry could include questions about whether and how AI is being used in the invention creation process. In making inventorship determinations, it is appropriate to assess whether the contributions made by natural persons rise to the level of inventorship,” i.e., whether those contributions were “significant” under the patent law interpreted in the Guidance. “Failing to inquire when the circumstances warrant such an inquiry may jeopardize the validity of the application or document, or the validity or enforceability of any patent or certificate resulting therefrom . . . .” Therefore, patent counsel must now make AI-related inquiries at the outset of representation in a patent prosecution matter. Would-be inventors must: (1) be candid with their counsel about any use of AI in deriving the invention sought to be patented, and (2) if AI was in fact used, preserve all documents showing the prompts that were used and how, if at all, the prompts evolved to more specifically target the problem(s) being addressed by the invention.

“The USPTO views the inventorship guidance on AI-assisted inventions as an iterative process and may continue with periodic supplements as AI technology continues to advance and/or as judicial precedent evolves.” Nevertheless, the current Guidance represents a milestone first step in expressly recognizing the role of AI in deriving potentially patentable inventions.

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