How should AI assisted inventorship be dealt with from an IP perspective?

As the process of innovation relies increasingly on artificial intelligence (AI) inputs, this new legal quandry has been put before the USPTO.

The USPTO has now issued a guidance addressing this point.

https://www.federalregister.gov/documents/2024/02/13/2024-02623/inventorship-guidance-for-ai-assisted-inventions

Under current U.S. patent laws, inventorship is limited to a natural person(s), meaning that AI systems cannot be listed as inventors. While AI-assisted inventions are not per se unpatentable, there must be at least one named human inventor in order to secure patent protection. In addition, the individual(s) (natural person(s)) in question must have made a “significant contribution”. But to what degree ?

The guidelines provide several principles that derive from existing factors already used by the courts to assess inventorship when multiple inventors are involved.

 

  1. “Merely recognizing a problem or having a general goal or research plan to pursue does not rise to the level of conception.” In other words only presenting a problem to an AI system is not sufficient to qualify as an inventor. However, the guideline mention that “a significant contribution could be shown by the way the person constructs the prompt in view of a specific problem to elicit a particular solution from the AI system.

  2. “Reducing an invention to practice alone is not a significant contribution that rises to the level of inventorship.” The guideline mention that a natural person who merely recognizes and appreciates the output of an AI system as an invention is not necessarily an inventor.

  3. “A natural person who develops an essential building block from which the claimed invention is derived may be considered to have provided a significant contribution to the conception of the claimed invention even though the person was not present for or a participant in each activity that led to the conception of the claimed invention.” The guideline mention that “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

  4. “Maintaining “intellectual domination” over an AI system does not, on its own, make a person an inventor of any inventions created through the use of the AI system.

 

In addition, the determination of inventorship should be made on a claim by claim basis. This means that for each claim there should be contribution from at least one natural person and that contribution should be “significant” as explained above.

The guidelines which have been opened to recent consultations are likely to evolve and we will keep you updated on this fast moving area of patent law.

Gerard Giraud

 

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