Can AI inventions be patented? Scott Hervey and Eric Caligiuri explore recent USPTO guidance on patenting AI-assisted inventions in this installment of “The Briefing” by Weintraub Tobin.

Watch this episode on the Weintraub YouTube channel here.

Scott:
Can AI inventions be patented? Can inventors use AI assistance in the creation of an invention, and can that invention be patented? On February 12, 2024, the United States Patent and Trademark Office issued guidance on the patentability of inventions developed with the assistance of artificial intelligence. I’m Scott Hervey from Weintraub Tobin, and I am joined today by Weintraub lawyer and frequent guest to the briefing, Eric Caligiuri, to discuss this new development in patent prosecution on this episode of “The Briefing.” Eric, welcome back to “The Briefing.”

Eric:
Good to be here, Scott.

Scott:
So, Eric, the USPTO recently issued a guidance statement that addressed the listing of non-humans on patent applications. Now, this seems to stem from the various patent applications filed by Stefan Thaler or Thaler, which lists his AI tool device for the autonomous bootstrapping of unified sciences, or DABUS, as the inventor. The USPTO denied these applications, and this denial was upheld by the Federal Circuit.

Eric:
Right, Scott, in the guidance, the USPTO explained that AI systems and other non-natural persons cannot be listed as inventors on patent applications or patents. The USPTO reasoned that the US Supreme Court has indicated that the meaning of invention in the patent act refers to the inventor’s conception. Similarly, the Federal Circuit has made clear that conception is the touchstone of inventorship. Conception is often referred to as a mental act or the mental part of the invention. Specifically, it is the formation in the mind of the inventor of a definite and permanent idea of the complete and operative invention as it is hereafter to be applied in practice. Because conception is an act performed in the mind, it has to date been understood as only performed by natural persons.

Scott:
Eric, there has been some question about the patentability of inventions created using AI tools. The USPTO issued guidance on this issue as well.

Eric:
That’s right. The USPTO explained that 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. Thus, patent protection may be sought for inventions created through the use of AI tools under specific circumstances.

Scott:
So the USPTO made it clear that inventions created through the use of AI tools are not per se unpatentable.

Eric:
That’s correct. The USPTO said that there are no specific sections of the patent act that support a position that inventions that are created by natural persons using specific tools, including AI systems, result in improper inventorship or otherwise unpatentable. The statutes only require the naming of natural persons who invented or discovered the claimed invention. Irrespective of the contributions provided by an AI system or other advanced technology system.

Scott:
So, Eric, what are the circumstances under which a creator or inventor using an AI tool can claim ownership of the invention?

Eric:
In the context of AI-assisted inventions, natural persons who create an invention using an AI system or any other advanced system must still contribute significantly to the invention. There is no requirement for a named inventor to contribute to every claim in an application or patent. A contribution to a single claim is sufficient. However, each claim must have been invented by at least one named inventor. In other words, a natural person must have significantly contributed to each claim in a patent or patent application. In the event of a single person using an AI system to create an invention, that single person must make a significant contribution to every claim in the patent or patent application. Inventorship is improper if any patent or patent application that includes a claim in which at least one natural person did not significantly contribute to the claimed invention, even if the application or patent includes other claims invented by at least one natural person.

Scott:
In determining whether a person significantly contributes to an invention created using AI tools, the USPTO will look to the same test it uses to determine inventorship in claimed joint inventions, right?

Eric:
Correct. The USPTO looks at the Pannu factors. Each inventor 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, and do more than merely explain in the real inventor’s well-known concepts and or the current state of the art.

Scott:
So, Eric, what can applicants expect when filing an application for an invention created using AI tools?

Eric:
When applying the Pannu factors to determine whether natural persons significantly contributed to an AI-assisted invention? This determination is made on a claim by claim or a case by case basis, and each instance turns on its own facts. While the USPTO generally presumes those inventors named on the application data sheet are the actual inventor or joint inventors of the application, patent examiners will carefully evaluate the facts from the file record or other extrinsic evidence when making determinations on inventorship. When the facts or evidence indicates that the named inventor or joint inventors did not contribute significantly to the claimed invention, the civic claim and possibly the entire application may be rejected.

Scott:
No inventor wants to go through the time and expense of filing a patent application only to have it rejected. We know that an inventor must significantly contribute to the creation of the invention, and such contribution must meet the Pannu factors. What else can the inventor consider?

Eric:
Agreed. The USPT of them provided the following non-exhaustive list of principles that can help determine whether an AI assisted invention is patentable. First, merely recognizing a problem or having a general goal or research plan to pursue does not rise to the level of conception. A natural person who only presents a problem to an AI system may not be a proper inventor or joint inventor of an invention identified from the output of the AI system. However, a significant contribution can be shown by the way the person constructs the prompt and view of a specific problem to elicit a particular solution from the AI system.

Scott:
Now, reducing an invention to practice alone is not a significant contribution that rises to the level of inventorship.

Eric:
That’s right. A natural person who merely recognizes and appreciates the output of an AI system as an invention, particularly when the properties and utility of the output are apparent to those of ordinary skill in the art, is not necessarily an inventor. However, a person who takes the output of an AI system and makes a significant contribution to the output to create an invention may be a proper inventor. Alternatively, in certain situations, a person who conducts a successful experiment using the AI system’s output could demonstrate that the person provided significant contribution to the invention, even if that person is unable to establish conception until the invention has been reduced to practice.

Scott:
A natural person who develops an essential building block 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 for or a participant in each activity that led to the conception of the claimed invention.

Eric:
Correct. In some situations, the natural person who designs, builds, or trains an AI system in view of a specific problem to elicit a particular solution could be an inventor, where the designing, building, or training of the AI system is a significant contribution to the invention created by the AI system.

Scott:
Maintaining intellectual domination over an AI system does not, on its own, make a person an inventor of any inventions created through the use of the AI system. Right?

Eric:
Exactly! A person simply owning or overseeing an AI system that is used in the creation of an invention without providing a significant contribution to the conception of the invention does not make that person an inventor. The USPTO reminded applicants that they still have a duty to disclose, and in applications for AI-assisted inventions, this information could include evidence that demonstrates a named inventor did not significantly contribute to the invention because the person’s reported contribution was made by the AI system.

Scott:
Thanks, Eric, that was quite fascinating. Actually, I’m quite fascinated by the USPTO; having said that, a significant contribution could be shown by the way a person constructs the prompts in view of a specific problem to elicit a particular solution from the AI system. I think that’s, that’s pretty groundbreaking, right? I mean, that’s basically saying that an inventor could be considered to have significantly contributed to an invention that is created due to the output of a generative AI system based solely on the structure and construction of the prompts that they feed into the system. I think that’s pretty groundbreaking. Would you agree?

Eric:
No, I totally agree with that. I mean, essentially, what you’re saying is, based solely on the inputs into the AI system, they could potentially be considered an inventor, assuming that those inputs significantly contributed, I guess, to the output, which would be the conception of the invention.

Scott:
Yeah, I guess it has to do with the, it seemed from at least that statement that it seemed to be the work that goes into structuring the input, creating and structuring the input. Fascinating. I think we’ll definitely have to keep our eye on future patent applications that are filed based on the use of AI tools and see how this all shakes out. Thanks again, Eric, for bringing this to our attention.

Eric:
Thank you for listening to this episode of “The Briefing.” We hope you enjoyed the episode. If you did, please remember to subscribe, leave us a review and share this episode with your friends and colleagues, and if you have any questions about the topics we covered today, please leave a comment.