ARTIFICIAL INTELLIGENCE CAN NEVER BE AN INVENTOR

The U.S. Patent and Trademark Office (USPTO) recently issued guidance regarding the issue of inventorship when inventions are assisted by artificial intelligence. The guidance went into effect on February 13, 2024.

For several years, the USPTO has been addressing issues relating to the patent system and artificial intelligence. Then, on October 30, 2023, an Executive Order was issued by President Biden requiring the USPTO to issue inventorship guidance for AI dash assisted inventions.

In summary, the guidance issued by the USPTO states the following:

1 ) Only a natural person can be an inventor. 35 U.S.C. 100(f) defines an inventor as “the individual or, if a joint invention, the individuals collectively who invented or discovered the subject matter of the invention.” In Thaler v. Vidal, 43 F.4th 1207, 1213 (Fed. Cir. 2022), cert denied, 143 S. Ct. 1783 (2023), the Federal Circuit relied on that statute and held “that only a natural person can be an inventor, so AI cannot be.”

2 ) The use of artificial intelligence to assist with invention does not by itself render an invention unpatentable. There are no sections of the Patent Act stating that an invention is unpatentable just because tools such as AI systems were used.

3 ) An inventor must contribute in a significant manner to the invention in order to be named as an inventor. To contribute “in a significant manner” the courts have stated that each inventor must:

( A ) Contribute in some significant manner to the conception or reductions of practice of the invention,

( B) 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

 ( C ) Do more than merely explain to the real inventors well-known concepts and/or the current state of the art.

Pannu v. Iolab Corp., 155 F.3d 1344, 1351 (Fed. Cir. 1998).

4 ) The above guidelines apply to utility patents, design patents, and plant patents.

5 ) While it is rare for applicants to submit information regarding inventorship to satisfy the Duty of Disclosure, the Duty of Disclosure will apply to the extent that artificial intelligence adversely affects the issue of inventorship.

6 ) The Examiner can require the submission of information in the context of named inventors and AI assisted inventions to assist him/her with examination (Rule 105).

7 ) Priority claims to earlier filed applications must comply with the USPTO guidelines. A priority claim to a foreign application that names an AI system as a sole inventor will not be accepted.

The public has until May 13, 2024, to submit any comments to the USPTO's guidelines.