Who should be the named inventor for AI inventions?

Can artificial intelligence (AI) be named as an inventor in a patent? The question came to attention in 2022. In Thaler v. Vidal, 43 F.4th 1207 (Fed. Cir. 2022), the Federal Circuit concluded that an inventor must be a natural person to be named on a patent. The court did not address the question of who should be the inventors for inventions made by humans with the assistance of AI.

President Biden’s Executive Order issued October 30, 2023 directed the USPTO to issue guidance and illustrative examples for considering inventorship for AI inventions. On February 13, 2024, the USPTO issued the Guidance(February 2024 Guidance). The Guidance sets forth the USPTO’s policy and interpretation/application of statutes and case law concerning inventorship for AI inventions. Entity that is not a natural person cannot be listed as an inventor or joint inventor.

According to the February 2024 Guidance, AI-assisted invention are not categorically unpatentable and inventorship analysis needs to focus on human contributions. The Guidance provides that the human contribution should be analyzed via Pannu factors for significant contribution. Pannu factors include the following:

1. Conception: each named inventor (natural person) must contribute in some significant manner to the conception or reduction to practice of the claimed invention. This factor is consistent with inventorship analysis based on prior case laws.
2. Quality of contribution: each named inventor must make a contribution to the claimed invention that is not insignificant in quality when measured against the dimension of the full invention. For example, routine or expected input to AI systems is considered excercise of normal skill expected of one skilled in the art, which is considered insignificant in quality.
3. Mere explanation of the state of art: each named inventor must do more than merely explain to the real inventors well-known concepts and/or the current state of the art.

The Pannu factors are applied on a claim-by-claim and case-by-case basis to determine if a natural person significantly contributed to an AI-assisted invention. While a single person must significantly contribute to every claim in their invention, joint inventors only need to contribute to one claim, with each claim requiring at least one natural person inventor and at least one inventor must have recognition and appreciation.

The Guidance provides five guiding principles (GP) for applying Pannu factors:

• GP1: a natural person’s use of an AI system in creating an AI-assisted invention does not negate the person’s contributions as an inventor.
• GP2: merely recognizing a problem or having a general goal or research plan to pursue does not rise to the level of conception. For example, a person who merely presents a problem to an AI system may not qualify as an inventor, but they could demonstrate significant contribution by crafting a specific prompt that elicits a particular solution from the AI.
• GP3: reducing an invention to practice alone is not a significant contribution that rises to the level of inventorship. For example, a person who only recognizes and appreciates the output of an AI system is not necessarily an inventor, but a person who significantly contributes to the AI’s output to create an invention may qualify as an inventor.
• GP4: 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. For example, 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.
• GP5: maintaining “intellectual domination” over an AI does not, on its own, make a person an inventor of any inventions created through the use of the AI system. For example, a person simply owning or overseeing an AI system that is used in the creation of an invention cannot be an inventor without more.

It should be noted that the USPTO was seeking public comments on the guidance since February. Indeed, on June 6, 2024, the USPTO reopened the public comment period until the end of June. It seems that public comments received from patent industry stakeholders are largely urging the agency to adopt inventorship guidance that provides a broad pathway to patentability for AI-assisted inventions. Some raise concerns about uncertainty in applying Pannu factors, lack of sufficient examples from USPTO, lack of clear definition of “AI system,” etc.