12 Apr Guidance for AI-Assisted Inventions in the United States
Context
Criteria for determining the possibility of patenting inventions, in which Artificial Intelligence (AI) has been used to assist in the creation of the invention are gradually emerging and consolidating. In February 2024, the United States Patent and Trademark Office (USPTO) published a guidance for Artificial Intelligence (AI)-Assisted Inventions, aimed at providing indications to both the applicants and the examiners on how to determine whether the human contribution to an innovation is significantly enough to obtain a patent when AI has also contributed thereto.
In fact, the USPTO does not completely exclude the patentability of those inventions which have been created with the assistance of AI tools, but rather establishes a series of criteria that must be met to be considered patentable.
Contents of the guidance:
The guidance is published at the following link: https://www.federalregister.gov/documents/2024/02/13/2024-02623/inventorship-guidance-for-ai-assisted-inventions
It includes indications for the examiners on how to determine the correct inventor(s) to be named in a patent or patent application for inventions that have been created by humans, but with the assistance of AI. The key point is determining whether the “human” contribution is sufficiently relevant or significant and, in this regard, the relevance of the so-called Pannu test is also indicated (Pannu vs. Iolab Corp. case).
To this end, several criteria are indicated, although the document states that it is not an exhaustive list:
1. A natural person’s use of an AI system in creating an AI-assisted invention does not invalidate the person’s contributions as an inventor. The natural person may be listed as inventor or joint inventor if the person has significantly contributed to the AI-assisted invention.
2. Merely recognising a problem or having a general goal or research plan to pursue does not rise to the level of “conception” of the invention. A natural person who only presents a problem to an AI system may not be qualified as an inventor (or joint inventor) of the corresponding invention obtained from the output of the AI system. However, a significant contribution could be shown by the way the person constructs the prompt considering a specific problem to obtain a specific solution from the AI system.
3. The mere implementation of an invention obtained by an AI does not automatically qualify as inventor the person who has implemented it. A natural person who only recognizes and appreciates the output of an AI system as an invention is not necessarily an inventor, particularly when the properties and utility of the output may be apparent to a person skilled in the art. However, a person who takes the output of an AI system and makes a significant contribution to the output to eventually create an invention may be a proper inventor. In certain situations, a person who conducts a successful experiment using the AI system’s output could demonstrate that the person provided a significant contribution to the invention, even if that person is unable to establish “conception” until the invention has been implemented.
4. A natural person who develops an essential component 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 or involved in each of the activities leading to the conception of the claimed invention. In some situations, the natural person(s) who designs, builds, or trains an AI system in view of a specific problem to obtain a particular solution could be considered 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. Maintaining the “intellectual domination” over an AI system does not, on its own, make a person an inventor of any invention created using the AI system. Therefore, a person simply owning or overseeing an AI system that is used to create an invention, without providing a significant contribution to the conception of the invention, does not make that person an inventor, which seems to be in line with the DABUS case that has been referenced in our articles.
The guidance also refers to some specific examples of case scenarios and how the criteria described above would apply to them, and which is available at the following link: https://www.uspto.gov/initiatives/artificial-intelligence/artificial-intelligence-resources
Conclusion
The USPTO does not rule out the possibility of patenting inventions where AI has been used to help in the creation of such invention if there is a sufficiently relevant human contribution. The published guidance establishes general criteria for assessing this contribution and determining the possibility that the natural person or persons are be listed as inventors. It is worth mentioning that the document states that the creation of a specific prompt to obtain a certain solution by means of AI may contribute to consider the creator of that prompt an inventor.
Author: Carles Molina
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