Imagine That IP Law Blog

In 2022, when asked whether an artificial intelligence could be an inventor on a patent, the United States Court of Appeals for the Federal Circuit definitively answered “no.” Thaler v. Vidal, 43 F.4th 1207 (Fed. Cir. 2022). But does this mean that inventions made with AI systems are completely ineligible for patenting? In a new memo published Tuesday in the Federal Register, the United States Patent and Trademark Office (USPTO) also says “no.”  “Inventorship Guidance for AI-assisted Inventions,” 89 FR 10043 (USPTO, February 13, 2024).

In Thaler v. Vidal, the Federal Circuit held that an “individual” as used in the patent act refers only to a natural person (see, e.g., 35 U.S.C. §100(f), stating “The term ‘inventor’ means the individual or, if a joint invention, the individuals collectively who invented or discovered the subject matter of the invention.”), and accordingly, an AI system could not be on a patent. However, the court noted that the decision only involved sole inventorship, and did not address “the question of whether inventions made by human beings with the assistance of AI are eligible for patent protection.” Thaler, 43 F.4th at 1213 (emphasis in original). The USPTO now holds that such assistance “does not preclude a natural person(s) from qualifying as an inventor (or joint inventors) if the natural person(s) significantly contributed to the claimed invention...” 89 FR at 10046. Citing the so-called Pannu factors from Pannu v. Iolab Corp., 155 F.3d 1344, 1351 (Fed. Cir. 1998), the USPTO notes that an inventor significantly contributes when they “(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 not insignificant in quality, when that contribution is measured against the dimension of the full invention, and (3) do more than merely explain to the real inventors well-known concepts and/or the current state of the art.” 89 FR at 10047.

For practitioners and applicants, the lesson is relatively straight-forward: like other tools used in scientific investigation such as a chromatograph or spectrometer, an AI system can be a useful aid to an inventor, and neither prevents patenting nor needs to be named on the patent. However, care should be taken to identify the human inventor’s contribution beyond mere reduction to practice or appreciation of the output of the AI, as well as ensuring that every claim of the patent has a human inventor. Prompt engineering or crafting specific queries of an AI system, training the AI system for particular features, or using the AI’s output in an innovative way may all qualify as significant contributions to an invention.