Innovations in artificial intelligence (AI) technology are having an impact on virtually every sector of the U.S. economy, including intellectual property laws. For example, with the advent of AI tools and applications, a notable legal question has arisen: can AI-generated inventions can be patented?
Guidance Issued by the U.S. Patent and Trademark Office (USPTO)
The USPTO attempted to answer the question above in its February 2024 guidance focused on patent inventorship analysis for AI-assisted inventions. The USPTO guidance states 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.”
The USPTO guidance highlights one of the key issues in the intersection between AI and patent law – whether a natural person provided a “significant contribution” to the invention and was simply assisted by an AI system. The USPTO goes on to state that an AI system cannot be listed as an inventor on a patent application but also advises that an individual’s use of AI during the inventive process does not prohibit the invention from being patentable “if the natural person(s) contributed significantly to the claimed invention.”
In addressing what would qualify as a “significant contribution,” the USPTO guidance highlights factors set forth in Pannu v. Iolab Corp., 155 F.3d 1344, 1351 (Fed. Cir. 1998), to assess human inventorship. This Federal Circuit decision states that each inventor must:
- contribute in some significant way 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 simply explain to the real inventor’s well-known concepts and/or the current state of the art.
According to the USPTO guidance, a natural person who utilizes AI assistance in the inventive process must meet the significant contribution standards described in Pannu.
Looking Ahead
The USPTO guidance provides a general framework for anticipating how to approach drafting a viable patent application where an AI system played a role. The USPTO has acknowledged that it expects AI usage to play an increased role in the inventive process. Nevertheless, the USPTO also makes clear that patentable inventorship will continue to focus on substantial contributions by natural persons. The application of the factors in Pannu, along with the AI-specific principles laid out in the USPTO guidance, provides inventors with a guidepost to help assess inventor contributions.
Have Questions About Your Intellectual Property Rights? Contact Omni Legal Group Today
AI is changing many aspects of life and patent law is no exception. If you are looking for assistance in assessing the viability of patent application where AI was involved, then contact Omni Legal Group today. Our top-rated patent attorneys in Los Angeles will find the right intellectual property type to protect your invention. Whether it’s a provisional patent, non-provisional patent, design patent, utility patent, or plant patent application, a USPTO registered patent attorney with Omni Legal Group will discuss your invention with you to determine the best path forward. Contact us today to learn more, call 855.433.2226 or visit www.OmniLegalGroup.com.