USPTO AI Guidance Reiterates DABUS Decision

The U.S. Patent and Trademark Office (USPTO) today released guidance for determining inventorship of artificial intelligence (AI)-assisted inventions. As the Office has previously stated, the guidance clarifies 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 issued a call for comments on AI inventorship in February 2023. That Federal Register Notice (FRN) asked the public to respond to 11 questions, including “how does the use of an AI system [in the invention process]…differ from the use of other technical tools”; whether AI inventions may be patentable under current patent laws on joint inventorship by, for example, simply listing the natural person involved in inventions created by AI machines; and whether statutory or regulatory changes should be made to better address AI contributions to inventions.

According to a USPTO Director’s Blog post that is scheduled to be published today (now available here), the latest guidance is a direct result of the feedback gathered in response to the February 2023 FRN. It also underscores and expands on the Office’s May 2020 decision in Thaler v. Vidal, in which  U.S. Patent Application No. 16/524,350, titled “Devices and Methods for Attracting Enhanced Attention”, was denied for failure to “identify each inventor by his or her legal name” on the Application Data Sheet (ADS). The ADS listed a single inventor with the given name DABUS and the family name “Invention generated by artificial intelligence.” DABUS stands for “Device for the Autonomous Bootstrapping of Unified Sentience”. The Application listed Stephen L. Thaler as the Assignee, Applicant and the Legal Representative.

The USPTO noted in its decision that the Patent Act repeatedly refers to inventors as natural persons. For example, 35 U.S.C. § 101 states that “Whoever invents or discovers…”, wherein the term “whoever” suggests a natural person. The USPTO also referred to 35 U.S.C. § 115, which uses terms such as “himself”, “herself”, “individual”, and “person”. The U.S. District Court for the Eastern District of Virginia subsequently granted summary judgment to the USPTO and the U.S. Court of Appeals for the Federal Circuit “unambiguously” backed the decision in August of 2022.

Today’s guidance document explains that the term “individual” as used in in 35 U.S.C. 100(f) “ordinarily means a human being, and Congress did not provide any indication it intended a different meaning.” While the statute provides no basis for accepting contributions to an invention made by a tool like an AI system, “even if those AI systems were instrumental in the creation of the invention,” it also does not preclude granting patents to natural persons on inventions made with the assistance of such tools. The inability to list the AI system as an inventor does not amount to improper inventorship because the “statutes only require the naming of the natural persons who invented or discovered the claimed invention, irrespective of the contributions provided by an AI system….”

The guidance also discusses the relevance of the three-part test articulated in Pannu v. Iolab Corp. in determining inventorship in the context of AI-assisted inventions. Under the Pannu test, an inventor must have: “(1) contributed in some significant manner to the conception of the invention; (2) made 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) [done] more than merely explain to the real inventors well-known concepts and/or the current state of the art.”

The Pannu factors are ordinarily used in making joint inventorship determinations. But “it follows that a single person who uses an AI system to create an invention is also required to make a significant contribution to the invention, according to the Pannu factors, to be considered a proper inventor,” explains the USPTO guidance.

With respect to AI-assisted inventions, this means that “each claim must have been invented by at least one named inventor.” The guidance continues:

“In other words, a natural person must have significantly contributed to each claim in a patent application or patent. 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 in 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.”

The Office has also provided two examples illustrating how AI-assisted inventions will be treated during examination. These examples employ the five “Guiding Principles” articulated as part of the guidance, which are as follows:

1. 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. The natural person can be listed as the inventor or joint inventor if the natural person contributes significantly to the AI-assisted invention.
2. 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 could be shown by the way the person constructs the prompt in view of a specific problem to elicit a particular solution from the AI system.
3. Reducing an invention to practice alone is not a significant contribution that rises to the level of inventorship. Therefore, 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, 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 a significant contribution to the invention even if that person is unable to establish conception until the invention has been reduced to practice.
4. 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. In some situations, the natural person(s) 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 with the AI system.
5. 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. Therefore, 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 guidance also notes that the document released today and the guiding principles apply equally to design and plant patents and it reinforces existing duties and obligations to the Office as applying equally to AI-assisted invention applicants.

Commenting on the announcement today, Randy McCarthy of Hall Estill noted that the guidance’s lack of a requirement that an applicant who is filing an AI-assisted invention disclose to the USPTO that AI was used as part of the inventive process differs from the U.S. Copyright Office’s policy on AI applications,” which does include such a requirement. “Still, it remains good practice to accumulate and record the extent to which AI was used during the development process should such information be needed in a subsequent proceeding to establish inventorship or some other contested issue,” McCarthy said.

Jamie Nafziger with Dorsey & Whitney gave the guidance “a round of applause for its common sense approach to invention.” Nafziger noted that, under the guidance, while “constructing a prompt in view of a specific problem or building or training an AI system to elicit a particular solution may constitute invention by humans, owning or overseeing an AI system would not.”  She added:

“As with everything, the challenge will be in implementing the guidance. How sophisticated of a prompt will be required for a given invention? In connection with training an AI system, what level of planning will be required? Patent examiners will surely have some interesting challenges ahead.”

The Office will be conducting a public webinar on March 5 from 1:00-2:00 pm ET to answer questions and concerns.

Editor’s note: This article was updated on 2/12 to add Nafziger’s and McCarthy’s commentary.

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