By: Jennifer Gomes
In this booming age of artificial intelligence (AI), laypeople and inventors alike are using AI across many different sectors. The lines have begun to blur for inventors who have used AI to create their inventions. While this technology has propelled innovation forward, it also poses issues for inventors who seek a patent for their devices and designs. Inventions developed with the help of AI have created ambiguity in the definitions of patentability and inventorship that govern patent issuance. However, the United States Patent and Trademark Office (USPTO) has recently issued guidelines to advise on AI-assisted inventions.
The USPTO is the federal agency that grants patents and trademarks in accordance with Article I, Section 8, Clause 8 of the Constitution. The Office outlines the requirements that an invention must fulfill in order to be patentable. To obtain a patent, the invention must be novel, nonobvious, and must meet subject matter eligibility requirements. Further, the USPTO has established that patent inventors must be human beings. The Patent Act requires each of those individuals who have contributed to any claim of the invention to be named on the patent or patent application.
The recent push for guidance was kickstarted by the Biden administration’s “Executive Order on the Safe, Secure, and Trustworthy Development and Use of Artificial Intelligence,” which specifically requested action from the USPTO. The guidance points to the recent Thaler v. Vidal decision by the Federal Circuit, which held that “only a natural person can be an inventor, so AI cannot be.” Clear statutory language provides that U.S. patents and patent applications may only list natural persons as inventors. Nonetheless, the new guidance allows natural persons to use AI systems in the invention process. The AI system still cannot be listed as an inventor itself, despite the use of the system to create the invention. For example, if two inventors filed for a patent for some new method of manufacturing, but used algorithms generated by AI to aid in the synthesis of the manufacturing process, the patent should list only the two joint inventors as the creators of the method. Despite the theoretical “third inventor” (AI) aiding in the creation of the method, the inventorship is still properly listedand will not render the invention unpatentable when presented to a patent examiner.
The guidance also tackles the question of inventorship in looking at the extent to which AI has hindered the natural person’s contribution to the invention. The test for determining human contribution was defined in Pannu v. Iolab Corp. Inventorship rights are given to natural persons who “(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.” Taking these factors into consideration for AI-assisted inventions, this means that the natural person must have significantly contributed to each claim of the patent. This aspect is especially important in drafting the patent application, as patent attorneys will need to correctly construct the claims to outline specific AI system outputs that contributed to the invention.
There are other aspects of the guidance that impact U.S. patents and patent applications. These include no disclosure requirements for the use of AI, recognition of AI-assistance for plant and design patents, and alignment with other courts that have prohibited listing AI as an inventor on patents. This aligns with the recent decision by the United Kingdom (UK) Supreme Court on December 20, 2023. The Court ruled that AI systems cannot be listed as inventors on patent applications. After a litany of public commentary on the need for a response to AI developments in technology, the Court responded in a unanimous decision to keep inventors as natural persons and not machines.
Why are these guidelines so important? The entire idea of granting patents is to incentivize innovation and progressingenuity. In order to keep this incentive appealing to inventors, inventorship rights must remain for natural persons. The patent incentive may be compromised if inventorship can be granted to AI systems. The guidelines support the idea of human design and “human ingenuity” in the rising world of AI-driven innovation. They allow natural persons to continue being rewarded for the inventions they disclose to the public. Although the guidelines do not address all of the issues that AI-assisted inventions present, they are a step in the right direction to protect patent-holder rights.
Student Bio: Jennifer Gomes is a second-year law student at Suffolk University Law School. She is a staff writer for the Journal of High Technology Law. Jennifer received a Bachelor’s of Science in Biomedical Engineering with a minor in Mechanical Engineering from Worcester Polytechnic Institute (WPI) in 2020. Prior to law school, she worked in the biotechnology industry.
Disclaimer: The views expressed in this blog are the views of the author alone and do not represent the views of JHTL or Suffolk University Law School.
