Artificial Intelligence (AI) systems have shown surprising creativity and ingenuity in problem solving, but they won’t be receiving patents for their inventions. On February 13, 2024, the United States Patent and Trademark Office (USTPO) issued its Inventorship Guidance for AI-Assisted Inventions,¹ which clarifies the USPTO’s position on inventions that are created with the assistance of AI systems and which is applicable to all pending applications. The USPTO acknowledges that AI systems may assist in the inventive process and their contributions may even rise to acts of inventorship, but the USPTO interprets U.S. Patent Law to restrict inventorship of patents and patent applications to natural persons. Any patent application naming a machine “as either an inventor or joint inventor will be considered by the USPTO to have improper inventorship” and is subject to rejection.² The USPTO’s determination follows the Federal Circuit’s decision in Thaler v. Vidal that under the Patent Act only natural persons may be inventors.³

Patents naming an AI system as the sole inventor are not permitted. Patent applications for AI-assisted inventions must name inventors who are natural persons that contributed in some significant manner to the conception or reduction to practice of the claimed invention. The mere ownership or overseeing of an AI system used in the creation of an invention does not make one an inventor. The bare recognition and appreciation that the output of an AI system is inventive also does not constitute inventorship, especially where the properties and utility of that output are readily apparent.

Circumstances that may establish or demonstrate a significant contribution to an AI-assisted invention sufficient for inventorship, include:

1. designing, building, or training an AI system “in view of a specific problem to elicit a particular solution … where the designing, building, or training of the AI system is a significant contribution to the invention created with the AI system;”
2. presenting a problem or constructing a prompt to an AI system “in view of a specific problem to elicit a particular solution from the AI system;”
3. making a significant contribution to the output of an AI system to create an invention; and
4. conducting a successful experiment using the output of an AI system.

The USPTO’s guidelines are based on the preexisting case law on inventorship developed in the context of interference proceedings and under pre-AIA 35 U.S.C. § 102(g).

In practice, questions regarding an inventor’s contribution to an AI-assisted invention are unlikely to arise during the prosecution of a patent application. The USPTO will presume that all inventors named in an application are the actual inventors. Although the USPTO does have the ability to request information relating to inventorship, such requests are unlikely unless the record of the application provides some reasonable basis to conclude that one or more named inventors may not have made a significant contribution to the claimed subject matter.

Nevertheless, the failure to properly name the inventors in a patent application for an AI-assisted invention may risk the validity of any subsequently issued patent. Applicants have a duty to disclose all information material to patentability,⁴ which “includes information that raises a prima facie case of unpatentability due to improper inventorship” -- e.g., that the purported contributions of an inventor were actually made by an AI system. The lawyer preparing an application also has a duty of reasonable inquiry,⁵ which includes the determination of proper inventorship -- e.g., how an AI system was used in the creation of the invention.

AI-assisted inventions may also raise future questions regarding priority claims to related foreign patent applications. U.S. patent applications are often filed pursuant to international agreements (e.g., Paris Convention or Patent Cooperation Treaty), which allow the U.S. application to claim the benefit of an earlier filing date of a related foreign application with at least one common inventor. However, a U.S. patent application may not claim priority to a foreign application that names a machine as the sole inventor.

At present, the problem of foreign priority is largely academic. Australia, the European Patent Office, Germany, Israel, New Zealand, South Korea, and the U.K. have similarly determined that machines cannot be inventors. To date, only South Africa has granted a patent to an AI system as the sole inventor. South Africa has a depository patent system where patent applications are only reviewed for formalities and do not undergo substantive examination (e.g., for novelty or inventive step). Substantive review only occurs if the granted patent is challenged in litigation (e.g., for infringement or revocation), and the only machine patent has not yet been challenged.

^{[1] 89 Fed. Reg. 10043 (Feb. 13, 2024).
[2] 35 U.S.C. §§ 101 and 115.
[3] 43 F.4th 1207 (Fed. Cir. 2022), cert. denied, 143 S. Ct. 1783 (2023).
[4] 37 C.F.R. § 1.56
[5] 37 C.F.R. §§1.4 and 11.18}

This publication is intended for general information purposes only and does not and is not intended to constitute legal advice. The reader should consult with legal counsel to determine how laws or decisions discussed herein apply to the reader's specific circumstances.