This might seem like a distinction without a difference but if you are going to patent any inventions you develop with the assistance of artificial intelligence, you need to know which it is. On February 13, the United States Patent and Trademark Office (USPTO) released their Inventorship Guidance for AI-Assisted Inventions. In it, the USPTO acknowledges that AI will inevitably play a greater role in the innovation process and outlines the specific criteria under which AI-assisted inventions are patentable.
“while AI-assisted inventions are not categorically unpatentable, the inventorship analysis should focus on human contributions, as patents function to incentivize and reward human ingenuity.”
But what does this mean:
- Under the USPTO rules, only natural persons can be listed as inventors. AI is not a natural person so therefore; AI cannot be listed as an inventor.
- But AI can assist a natural person, but their patent claim is only valid if that natural person significantly contributed to the claimed invention.
“Significant contribution” is determined by the Pannu factors, so named for Pannu v. Iolab Corp., 155 F.3d 1344, 1351 (Fed. Cir. 1998) which says that each inventor listed on a patent/patent application must:
- “contribute in some significant manner to the conception or reduction to practice of the invention”
- “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”
- “do more than merely explain to the real inventors well-known concepts and/or the current state of the art”.
While Pannu factors have traditionally been considered for joint inventors when two or more people create an invention, in the context of AI-assisted inventions, this consideration means that the natural person who is doing the inventing must contribute to every claim in the patent/application. Just recognizing the problem and using AI to produce a solution is not a significant contribution – especially when the solution is obvious to anyone who has knowledge in the field of the invention. Additionally, merely being the creators of the AI tool without a more significant contribution to the invention does not qualify the creators to be listed as inventors.
But why is this so important? Because improper inventorship is a ground for rejection during patent prosecution or invalidation during litigation. So, if a USPTO examiner during prosecution believes that artificial intelligence and not a natural person listed as an inventor made a significant contribution to a claim, they can reject it and the claim may be canceled. While this may not happen very often, lawyers still have a duty to make reasonable inquiries to have the correct inventorship when filing a patent application.
More importantly, this will often come into play during litigation when a defendant attacks the validity of your patent. Any invention that was made with the assistance of AI will be pulled apart and dissected by the attorney, searching for a reason to invalidate your claim.
So what can you as a patent applicant or owner do to make sure your claim is valid?
- Make sure that you or your natural person inventors carefully document how the invention is developed when using AI systems.
- Do this by contemporaneously recording the significant contributions of the natural persons involved in the invention project.
In summary, when you are developing a new invention with artificial intelligence, make sure that the AI is assisting you, and not the other way around.
If you’d like to discuss filing your patent application, email Patent Attorney Kathleen Kuznikci at kkuznicki@lynchlaw-group.com
