It depends (what did you expect a lawyer to say?). The United States Patent and Trademark Office (USPTO) has just issued guidance indicating inventions created solely by artificial intelligence are not protectable by patent and no artificial intelligence system may be named as an inventor on a patent application. This is not too surprising as it closely mirrors the U.S. Copyright Office’s recent refusal to register copyright in artistic works created solely by artificial intelligence.
So artificial intelligence cannot be an inventor, but what if artificial intelligence is only used to assist in the creation of the invention? Is the resulting invention patentable?
According to the new UPSTO guidance, a human inventor may file a patent application on an invention developed with the assistance of AI if the human inventor provided a “significant contribution” to one or more of the claims in the patent application. For the human inventor to obtain a patent on an invention developed with the assistance of AI: 1) the inventor must be a human being; 2) the patent application must be filed on or after February 13, 2024; and 3) the human’s contribution to at least one patent claim must satisfy all of the factors outlined in Pannu v. Iolab Corp., 155 F.3d 1344, 1351 (Fed. Cir. 1998) (the “Pannu” factors).
To meet the Pannu test, the human inventor must: (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 significant when measured against the full invention, and (3) do more than merely explain to the other inventors (be they human or AI) well-known concepts and/or the current state of the art. If the human fails to meet even one of these factors, that human is not an inventor of the invention, regardless of any AI contribution to the development.
If no humans meet all of the Pannu criteria, the invention is not patentable and the USPTO will reject any patent application covering the invention under 35 U.S.C. 101 (no “whoever” (human) exists to have invented or discovered the invention) and/or 35 U.S.C. 115 (failure to name the inventor).
The USPTO gave itself wide berth in applying this new guidance, stating there is no bright-line test as to what constitutes a human’s significant contribution to inventorship. Without committing itself to any specifics, the USPTO states it will use the following factors to interpret the application of the Pannu factors:
Does not constitute inventorship
Using AI to invent something
Creating plan to attack problem
Recognizing a problem
Inputting that problem into an AI system
Recognizing an invention in AI output
Owning or overseeing an AI system used to an invention
May indicate inventorship
Making a significant contribution to AI-assisted invention
Constructing a specific AI prompt to elicit a desired solution to a narrow problem
Making a significant contribution to the output of AI to create an invention
Successfully experimenting on AI output
Developing an essential building block from which the claimed invention derives
Designing, building, or training an AI system to a specific problem in a way that makes a significant contribution to an invention output by the AI system
To assist in the application of the foregoing principles to various fact patterns the USPTO provides some straightforward hypotheticals.
Bear in mind though, while the foregoing guidance is what the USPTO currently uses to analyze patent applications filed on or before February 13, 2024, the guidance is not only not the law, it is not even a formal rule. If you have an edge case or if it is unclear how the foregoing guidance applies to a particular fact pattern, it is best to review your particular facts directly in light of existing case law, such as Pannu, and governing statutes, such as 35 U.S.C. 101 and 35 U.S.C. 115.
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