by Dennis Crouch
The U.S. Patent and Trademark Office (USPTO) recently published examination guidance and a request for comments on the treatment of inventorship for inventions created with the assistance of artificial intelligence (AI) systems. Inventorship Guidance for AI-Assisted Inventions.
The key takeaway here is that the USPTO believes that an AI-developed invention is patentable so long as a human satisfies the joint-inventorship standard of “significantly contributing to the invention.” A human who provides a significant contribution may be the sole inventor and original owner, even in situations where the AI provided the greater contribution.
The PTO’s approach here is fairly broad and will likely serve current AI use cases in most situations because most AI invention models of today are tightly controlled and managed by humans rather than simply arising from AI autogeneration or broad prompting. Thus, from a practical effect, there will likely be at least one natural person who satisfies the joint inventorship standard in the vast majority of cases. (Recognizing here that mere control of an AI is insufficient. Rather, the human must provide significant inventive contribution).
Although I am very sympathetic to recognizing human contributions, I also want a patent system that broadly encourages innovation without either prescribing or proscribing particular approaches. The flexibility of this guidance allows room for both human and machine intelligence to intersect in the creative process. But, we should continue monitoring the effects the policy to ensure it does not unduly constrain AI’s eventual capacity to autonomously formulate inventive concepts. But for now, the USPTO’s basic framework reasonably balances competing interests.
But, the USPTO’s approach is not fully grounded in the law because it allows for patenting of an invention in a situation where no human or combination of humans fully conceived of and originated the invention. Rather, we are simply looking for at least one human who provided a significant contribution. The guidance does not particularly address this issue and, by declining to specifically justify the legal grounds why human “significant contributions” suffice even without complete conception, the USPTO leaves the door open to contrary arguments. Opponents could contend that full conception remains legally required for inventorship and that this expansion of the inventorship doctrine exceeds the statutory language. It is not clear who will have standing to make this particular argument.
No AI Inventors Allowed
First, the notice recognizes and follows existing case law that only natural persons can be listed as inventors on U.S. patents and patent applications. This principle was established in Thaler v. Vidal, 43 F.4th 1207 (Fed. Cir. 2022), where the Federal Circuit held that the term “individuals” in the Patent Act refers only to human beings barring. Consequently, an AI system cannot be named as the inventor on a patent application, even if it was instrumental in developing the claimed invention.
The Law Requires Significant Contribution at Least One Human
The USPTO guidance explains that just because an AI system assists with an invention does not automatically render it unpatentable. Rather, for an AI-assisted invention created by a natural person or team of people working with an AI system, the key analysis focuses on whether those individuals made “significant contributions” to the conception of the invention. In other words, in order for an invention to be patentable, there must be at least one human who made “significant contributions” to the creation of the invention — either conception or reduction to practice.
Drawing from existing case law on joint inventorship, the notice refers to three main factors, known as the “Pannu factors,” for evaluating significant contribution:
- contributing “in some significant manner to the conception or reduction to practice of the invention”,
- making “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
- doing “more than merely explain to the real inventors well-known concepts and/or the current state of the art”
Pannu v. Iolab Corp., 155 F.3d 1344, 1351 (Fed. Cir. 1998).
The Pannu factors are derived from the situation of joint-inventorship among humans, where multiple individuals each provide some contribution. Here, the approach is slightly different — effectively joint inventorship among human and AI contributors. In the analysis, the AI can never be considered an inventor regardless of its level of contribution. The human will be an inventor so long as they would be considered at least a joint inventor.
Typically for joint inventorship, we first look on a claim-by-claim basis to determine the inventors, but then we list inventors at the whole patent level. Thus, in a patent with three joint inventors it could be that one of the inventors only contributed to the subject matter found in one of the claims. The human-AI collaboration is different. According to the USPTO, each claim needs to have a human inventor. Claims without a human inventor should be cancelled. This ensures that every surviving claim has at least one natural person satisfying the Pannu factors.
One query is involves dependent claims. For instance, imagine an application with Claim 1 covering a method of predicting protein folding stability using a jointly-developed human-AI technique, along with dependent Claim 2 adding an additional limitation associated with predicting a specific family of proteins conceived purely by the AI system. Here, the human inventor likely deserves credit for the core concept in independent Claim 1, so long as they provided a significant contribution to its conception, including utilization of the AI system. Although the AI alone conceived the further embellishment in Claim 2, a reasonable argument can be made that the human inventor still made an overall contribution to Claim 2 by virtue of its dependency on Claim 1. Accordingly, the human could potentially qualify as an inventor on both claims. Nonetheless, reasonable minds could differ on this conclusion for dependent claims, and applicants should carefully assess inventorship on both independent and dependent claims under the new USPTO guidance.
Principles for AI Inventorship Analysis
Applying these factors to AI-assisted inventions can be challenging. Accordingly, the notice sets forth several guiding principles, including:
- AI Usage Valid: Using an AI system does not negate a natural person’s possible inventor status, provided they meet the Pannu factors. Example: A researcher who uses a protein-folding AI tool to help design a new enzyme can be listed as the inventor because they formulated prompts for the AI and then used their expertise to select the most promising enzyme outputs for further testing.
- Prompting with the Problem Insufficient: Merely presenting a problem to an AI system or recognizing an invention from its output is likely insufficient for inventorship. Example: An engineer asks broadly asks an AI system to provide an improved product design that solves a known problem in the existing product. Merely presenting the problem to a general AI without further conception contributions from the engineer would likely fall short of establishing inventorship.
- Mere RTP Insufficient: Reducing an invention to practice is typically not a significant contribution to the invention, unless the process is beyond the level of ordinary skill. Example: An engineer reduces to practice an AI system’s independently conceived invention by building and testing a prototype device. However, the programmer had no further role in developing the inventive concept beyond recognizing the AI’s output and constructing the prototype using routine skills. This reduction to practice alone likely does not rise to a significant contribution for inventorship.
- Essential Development Sufficient: Developing essential components like datasets or model architectures that are designed to address a specific problem and that help the AI system produce the invention may constitute a significant contribution. Example: A computer scientist trains an AI system on a specifically curated dataset and novel neural architecture so it can output a more efficient fuel injector design. These essential developmental contributions leading directly to the AI’s inventive output could allow the scientist to qualify as an inventor on the generated invention, although this example might be questionable.
- Mere Control Insufficient: Owning or maintaining control over the AI system alone does not make someone an inventor. Example: An engineer purchases an off-the-shelf generative design AI system and simply runs it on a computer cluster under her oversight. Despite managing the AI system, if the engineer provides no further conception input or enhancement of the system or its output, mere ownership and control would be deemed an insufficient contribution for inventorship.
Although these are some examples that serve as guiding principles. The Guidance (and the law) repeatedly state that inventorship is a highly fact-intensive question that has to be analyzed on a case-by-case basis. One note – Although I derived the principles from the guidance, my particular examples are mine (Crouch) and did not come from the guidance itself.
Additional Impacts on Patent Practice
Besides providing a framework for inventorship evaluation, the USPTO notice covers several other issues like duties of disclosure and priority claims for AI-related applications. Of note, examiners can request information about inventorship even if not necessarily material to patentability. Typically, an examiner will not formally request information absent “a reasonable basis to conclude that one or more named inventors may not have contributed significantly to the claimed subject matter.” In addition, the USPTO believes that patent attorneys and agents have a continuing duty of reasonable inquiry into the inventorship that begins with submission of the patent application. “Failing to inquire when the circumstances warrant such an inquiry may jeopardize the validity of the application or document, or the validity or enforceability of any patent or certificate resulting therefrom, and could result in sanctions or other actions under 37 CFR 11.18(c).”
Seeking Public Comments: The USPTO is seeking public comments the inventorship guidance, and has set a 90 day deadline. Meanwhile, the guidance appears to immediately impact inventorship evaluations for patent applications.
This thread is a microcosm of the Patently-O environment.
A topic that I have extensively and quite accurately provided background of both legal and factual nature is “met” by my naysayers with attempted ridicule. When pressed, my naysayers disappear and cannot engage on the merits.
I am a layperson to US patent law, but I am so fun of it and yet a bit confused by the guidance stated above: is it logical to use the rules for recognizing inventorship to partly bypass the patent-eligibility issue, since the existing joint inventorship rules are, to me, wholly established on the premise that novelty or inventiveness is all from real human wisdom?
For me, I think patent law is essentially about protecting and rewarding the human wisdom that produces the inventive idea, and thus AI could be at most an assisting tool. Without independently assessing the novelty of or imposing express requirements of inventiveness upon human-part contribution might lead to a slippery slope down to status that, one day patent protections would be granted to purely skilled labor efforts by human individuals.
The great lawyer answer: it depends.
“and thus AI could be at most an assisting tool.”
Let’s set out the Hobson choice again, and here let’s be explicit that the type of AI (there is a fairly wide spectrum) is Gen AI.
This expressly means that the output is neither traceable to the humans at the build of the AI engine, nor to the human at the prompt side.
You are faced with a fact that you MUST choose one of the following:
a) Gen AI is an inventor of part of the output.
b) Gen AI can only present ‘that which is already known.’
Before we arrive at any conclusions, which choice would you like to make?
Two thoughts:
1. While understandable that they’d want to do so, the Patent Office has absolutely no legal or constitutional authority to delineate who — or what — can or cannot patent. That is solely the purview of Congress. Solely.
2. If anyone believes that any of their / clients’ patents issued under this guidance will withstand the patent buzz saw that is the CAFC, they are fooling themselves (and their clients).
As a friendly reminder MM believes he is finna tryna drawl this:
link to youtube.com
Too subtle for me, 6.
What point were you trying to make?
The lulz from this exchange broke the internet.
Just curious, Smelly.
What ‘exchange’ have you provided that advances ANY cogent subject related to patents or patent law?
Or for that matter, any serious position on world events?
All that you have done is play the p00r man’s Malcolm.
Do you ‘get’ how low that is?
I believe the exchange he is talking about is the ongoing discussion. Where I believe we left off with MM telling a literal schizoid (super interested in the abstract, like o I don’t know artisticals) that he didn’t know about art history lololol. This of course transpiring at the exact same time when there was a literal giganto art history book from barnes and noble bargain bin over on my couch pillow. And likely a week after I got done watching a series of specials on Göbekli Tepe and surrounding sites and the art at that site (many erect animal protrusions at that site lolol). To say nothing of Sumer, Ur, Hittites, and on and on ancient peoples. Set aside obviously Rome, greece (winged victory a truly good piece as is many a piece in the smithsonian collection from Alexander’s time), Asian countries (could rattle), and egypt. As well as who can forget old european art, pre-rome, and mesoamerican and other stuff from the americas (Mound builders, chan chan, and other obscure ones included)? Had a vid in an open tab about cave art about to view I finished up last night. In any event, to say that I likely know more about art history off the top of my head than my mom (art history minor lol) or anyone in her classes knows in toto is likely an understatement. This being due probably mostly to my breadth of historical knowledge, geographical knowledge and overall ability to put each part into the overall context. In any event, for MM’s purposes I’m more than up to speed on quite a bit of art history, and history in general.
Winged Victory has been exhibited at the Louvre Museum in Paris, at the top of the main staircase, since 1884.
per Wikipedia. i’ve seen it there at least 2 times in person. who is telling you it’s in the Smithsonian collection?
B-b-but his breadth of historical knowledge, geographical knowledge and overall ability to put each part into the overall context is better than his mom’s!
Lulz
Of course he still can’t write worth a darn.
Funny that, is it not preferable to have “poor writing” that at least attempts an exchange of ideas than “great writing” that attempts nothing?
The epitome of form over substance, eh?
That’s some good animating done by AI. Popped colors, head just the right size to trigger cuteness response, but not too big, outstandingly well animated tummy, on and on and on I could continue. Bottom line, this was made waaaaay relatively easier to make for the creator with AI, than he would have been able to do without. And almost certainly turned out better. Singular issue that remains with it is maybe the right leg a tiny bit.
And MM has 0 chance to make it. Likely the creator couldn’t have made it either.
Ahh . i get your point.
Carry on.
There is a separate issue involved here As to whether or not, or to what extent, the use of AI in the derivation of the claimed invention must be disclosed under a PTO disclosure duty. I skimmed through this lengthy PTO “Inventorship Guidance for AI-Assisted Inventions” and found they are saying there is no change in disclosure duties. But then they are also saying that it might have to be disclosed if some live inventor was being named for contributing part of the claimed invention that was actually obtained from AI. ?
I doubt if that affects applications, which [as they note] rarely question inventorships, but it could be of interest in patent litigations or related IPRs that do?
It is NOT “the issue” as you seem to want to paint there. Paul.
The Office is clearly stating that non-human input must be reported.
On the other hand, this is another issue that I was first to present:
The dichotomy of whether or not generative AI has objectively provided something that no human can rightfully claim to be the inventor of.
If the answer is, “No,” (as those of the camp of “just using a tool” fall into), then ANYTHING of the AI must only be considered to BE prior art. Claims must not differentiate on this aspect, AND claims must rise above (both anticipation and obviousness) the AI item.
If the answer is, “Yes,” then claims MUST EXCLUDE such as the claims risk ”
F
A
T
A
L
joint-inventorship with an entity that CANNOT partake in the human right of turning human inchoate property into a bundle of human personal property rights through the patent process. Practitioners are ON NOTICE in regards to processing oaths, and THIS is not a situation that can fall to the (now old) saving grace of the AIA that allows ‘fixing’ of defective oaths.
Nice Hobson’s choice.
And again – for my naysayers – I put this on the table for discussion YEARS ago.
this guidance allows room for both human and machine intelligence
Glad to see the distinction enter the zeitgeist; both within and without the patent world. While some(!) commenters here disagree with my thoughts about eligibility, the real audience is a mere 20 people- 11 on the CAFC and 9 on the USSC. Those are the minds that matter.
Sooner or later, some desperate litigator is going to reach for the straw that I offered & present the concept to the minds that matter. My abstract has been read 4500 times, and I think it’s more salient than ever.
In pertinent part:
The proposed eligibility test requires that the information-consumer of a process-based invention’s result may not be a human being. Because non-human intelligences are a new fact in the world, products of human ingenuity, and essential actors in the Information Age, if the information-consumer is non-human, the information result of such a process-based invention should be patent eligible, subject to statutory and common law patentability requirements
link to papers.ssrn.com
Isn’t unperfected inventorship really an eligibility problem assuming a purported invention exists?
IMO, inventorship will be the much easier issue than the eligibility of new and useful information generated by AI.
As MM notes- inventorship is not a genuine issue and will likely never be, because it’s uncontroversial that every tool has an owner, and the owner of the tool accrues the utility of the tool. If I own a box that spits out inventions, I’m the inventor, because the law demands that an inventor be a natural person.
What should matter is not how the invention came to be, but what form of entity is deriving the proximate utility of the invention.
Courts simply won’t be granting Constitutional rights under Article I, Section 8, Clause 8 to non-human authors or inventors in the lifetimes of anyone now living.
“Isn’t unperfected inventorship really an eligibility problem assuming a purported invention exists?”
No.
It’s that simple.
Your hobby horse does not fit here.
It does not fit anywhere in patent law.
“ and the owner of the tool accrues the utility of the tool”
Also no – again, as I first here offered, an historical analogy to slavery dictates differently.
“Courts simply won’t be granting Constitutional rights under Article I, Section 8, Clause 8 to non-human authors or inventors in the lifetimes of anyone now living.”
THIS is true – do you know why?
Hint: I also offered the legal basis for this.
Come marty – I am expressly inviting you so that I do NOT have the last word here.
Feel free to ‘call a friend’ (I advise – again – that THAT friend be an informed attorney).
Three days is more than enough to call a friend, marty.
If you are not going to answer a direct call for you to reply, you have lost ANY position to whine about any semblance of “last word.”
It’s been a week now marty.
Are you going to whine again that I have the last word, despite the fact that I am expressly imploring you to engage?
You really know how to make my points for me, don’t you?
I read the term “fully conceive” as suggesting that if a human uses any tool in the conception, the human did not “fully conceive” of the invention. This would be an ideal time to clarify the use of tools in conception. As this has not been addressed on the past, is it insignificant?
LI,
Not quite.
It is critical to distinguish between MERE “use of” and non-human invention.
This is akin to some instances of “AI” (realizing that the term covers a spectrum of definitions) and “Generative AI.”
The simple directive is to recognize all aspects of a claimed invention can be traced to properly reflect the inchoate state of a HUMAN being attempted to be turned into a bundle of sticks of personal property.
If no human can account for ALL elements of a claim, and some elements were instead invented by a non-human, then there be real issues, even in (especially in) co-inventorship.
I had pointed this out YEARS ago when the DABUS case first came upon the scene.
Let’s see which of my naysayers will be the first to recognize that I have been correct all along.
Comedy gold from the neighborhood narcissist.
^^^ sure – just not how you think (that laughter is NOT laughter with you, but AT you)
If laughter is the sound of surprise, that nu tjob ain’t funny.
translation: wah – anon picks on me and shows me up in unsurprising ways.
Correct?
First, you need to articulate your position in an unambiguous manner. That, in itself, is probably the biggest hurdle you need to overcome. Part of your schtick (on most topics — not just this one) is to word your positions in such unclear terms that no one knows exactly what you are trying to say. The only thing that is clear is that you believe the other person is wrong — and grossly so.
Second, what is it about “examination guidance” and “guiding principles” that proves anything?
Meh, you like to pretend that it is “the other person” as well. Comments on a blog happen quick and I will not be spending a lot of time holding your hand. Positions ARE clear, and if YOU have an issue, then YOU should ‘raise your hand’ and seek clarification.
Here’s an example: Your “second” has no apparent bearing on any point of my comment. Can you be more clear as to a) why you bring this up, and b) what is this “prove” that you are after?
As to the other person being wrong – it is often because they ARE wrong.
I will (on occasion) give a thumbs’ up (plus one) or the like – but (and this is part and parcel of THIS forum), we have a LOT of people that are wrong – and badly so.
I will provide a range of response – but the harsh responses are very much on point and pertinent.
As I have oft quoted John Maynard Keynes: ‘Words ought to be a little wild, for they are the assaults of thoughts on the unthinking.’
You are always welcome to do you – I will ‘sm@ck’ the unthinking.
anon finally exposed himself on IP Watchdog with his constant you be you Mantra. When you think about it, why would they be anything other than themselves. I think you need a new mantra. Maybe now that you have finally exposed who you are, I wonder if it was because you are now letting go of your inner ha te towards women, people of color, and poor people unable to defend themselves financially. If I were you whether you are a believer or not, if religion doesn’t set you straight karma will.
Please stow away your Activist Privilege there.
Better yet, inform yourself as to the Motte and Bailey aspects of Sprint Left religion and the purveyors of actual divisive identity politics and
H
A
T
E
Your view of ‘exposed’ is beyond flawed – even for you.
You don’t find this gibberish to be unambiguous?
“Better yet, inform yourself as to the Motte and Bailey aspects of Sprint Left religion and the purveyors of actual divisive identity politics…”
Lulz upon lulz
First, it is not gibberish.
Second, I have provided links to the detailed exposition of the concept.
Third, YOUR choice to pretend to be 1gn0rant, f00ls no one.
In case you need a refresher: link to open.spotify.com
Ah yes, the script that the intellectual James Lindsay provides for you.
Lulz
Have you bothered with it at all, or are you going to continue to pretend that “this is gibberish”
Hint: when YOU decide to remain in 1gn0rance, the writings of others are not gibberish – it is YOU problem.
Ah yes, the script that the intellectual James Lindsay provides for you.
That Dr. James Lindsay and the rest of the ‘centrist’ thought-leaders that populate anon’s world?
LOL
Please Pardon Potential re(P)eat…
Your comment is awaiting moderation.
February 13, 2024 at 10:46 am
The falsity of this has already been noted.
Also, your view that ALL of these “must be” FAR right of center is known as the Overton Window shift of the Sprint Left.
But you are already aware of that Wt, so your m1s1nf0rmation here is deliberate.
“…is known as the Overton Window shift of the Sprint Left.”
Known to who?
smh
your m1s1nf0rmation here is deliberate
Misinformation? I just posted a speaker list for a Turning Point USA event.
Here is another speaker list for the same event. It is a veritable who’s who of those in the political middle. Noted centrists also include (Putin’s second favorite American) Tucker Carlson, Glenn Beck, Ben Carson, Ted Cruz, Tim Pool, Vivek Ramaswamy, Steve Bannon, Kari Lake, Donald Trump Jr., Kimberly Guilfoyle, Marjorie Taylor Greene, Matt Gaetz, and last, but not least, Roger Stone.
Dr. James Lindsay sure runs with a pretty tame crowd.
You are ignoring Mutt and Beetle Bailey as you attempt to close the Oldman window, you one-bucketed sprint lefter!
Lulz
Charlie Kirk’s a thought leader’s thought leader.
Lulzapalooza
Are you new? Snowflake’s (aka anon’s) own designated expert david boundy after “engaging” with his nonsense concluded Snowflake is an incredibly sloppy reader, writer, and thinker. Ever since Snowflake can’t stop admitting he’s paid to post.
Take it away, Snowflake!!
Your choice (S) – as plentiful as they are, are what generate coin for me, my pal with the Shifting historical pseudonyms.
Of course, my reply, being later AND being better is forthcoming, seeing as how your 0bsess10n with me will likely run a few more rounds.
It is eminently reasonable for me to enterprise off of YOUR choices, is it not?
test
clean and scrubbed reply being blocked – please release (one attempt will suffice)
who do you think you’re talking too , Snowflake?
Please Pardon Potential re(P)eat…
Your comment is awaiting moderation.
February 15, 2024 at 7:31 am
Quite clearly, to both the editor (to whom the “Report” tag goes) AND my naysayers – to let them recognize that their post has been seen and rebutted.
Snowflake did it again!!! admitted he’s paid to post! you can’t make this stuff up.
Well, Shifty – you continue to try to make “this stuff” up – given as we have well established that my enterprising – and getting paid – is NOT when I post (there is no truth to your assertion of “admitted he’s paid to post!” from two angles – supposed admission and supposed ‘fact’ of material of that supposed admission.
As always – YOUR choice – and it is your choice of YOU posting that I have enterprised upon.
He did it again!!!
Somebody find him a lawyer.
Don’t worry I see what he is trying to do with saying enterprising, as in the Enterprize Trademark. What I don’t understand is how can all those erasure have been allowed. Even DOLL being gone, it was under the Umbrella ☔.
Thank$ Shifty – ni€e choice.
“recognizing an invention [produced by a machine] is likely insufficient for inventorship. ”
Why? Since when?
Since the human portion could not claim the aspects that the human did not invent.
The answer to that: since always.
“Invention” is a legal term. The machine conceived of nothing.
You aren’t intelligent enough for this discussion, Billy.
Yeah, my money certainly was not on you – YOU could be counted on for your multiple projections (YOU are the narcissist and YOU are not intelligent to even grasp the legal implications, let alone have a C1ue as to how the various shades of Artificial Intelligence work).
My answers on the other hand – remain true and accurate.
There is no “conception” of an “invention” without a human because computers don’t “conceive”.
Questions for Dennis:
Can computers take an oath?
Can computers be deposed?
If there is a question about the meaning of a claim term (e.g., in a logical method for predicting a protein conformation, which should be ineligible in the first place), do we ask the computer to tell us the answer?
If a computer with different functionality is a “new” machine (a common belief among a certain sect of patent cultists) how do we identify and distinguish the original machine from the “new” machine that “learned” in the meantime?
The cart so far ahead of the horse here — not just at the PTO but in the article as well — the whole thing comes across as a farce. Now, that’s nothing new in the ignoble history of logic patenting but my goodness what a circus.
As I told you long ago, sentience is not required.
Nobody knows what you are talking about, Billy. Here’s a lollipop. Run along and play with your Joe Rogan action figure.
Oh, those who know, know.
You, are not one of them – that has been clear ALL along.
Joe Rogan action figure.
There aren’t enough lulz in the world.
Lulz
Given Joe’s background in martial arts, that’s actually not a bad idea.
But Breeze, I feel badly for you – what type of doll would fit your temperament?
“There is no “conception” of an “invention” without a human because computers don’t “conceive”.”
Next MM is going to tell us how men don’t conceive.
#bigotry
Do you have a doll for that for Breeze?