The More Things Change, the More They Stay the Same: AI Inventorship and Patent Litigation

Artificial intelligence (AI) cannot be the inventor or co-inventor on a patent but can be used as a tool. That is the gist of the U.S. Patent and Trademark Office’s (USPTO) recently released Inventorship Guidance for AI-Assisted Inventions.

The guidance follows a string of decisions by the USPTO and courts dealing with AI as inventors. On April 22, 2020, the USPTO issued a pair of decisions denying petitions to name the Device for the Autonomous Bootstrapping of Unified Sentience (DABUS), an AI system, as an inventor on two patent applications. The USPTO’s decisions explained that under current U.S. patent laws, inventorship is limited to a natural person. The decisions were upheld Sept. 2, 2021, in a decision from the U.S. District Court for the Eastern District of Virginia in Thaler v. Hirshfeld and affirmed on appeal in Thaler v. Vidal. In its guidance, the USPTO further expounds on the rule that AI cannot be an inventor and can only serve as a tool used by a natural person.

The question then becomes, is an invention developed by an AI unpatentable? According to the guidance, the answer depends on how involved a natural person is in developing the invention in conjunction with AI (the “significant contribution” test). An overview of the “significant contribution” test as it pertains to AI is provided below, along with two takeaways from the guidance applicable to patent litigation.

Significant Contribution

In the guidance, the USPTO treats a natural person who uses AI in the invention process as a co-inventor. While AI is not itself able to qualify as an inventor or co-inventor, to determine whether the invention could be patentable, one analyzes the situation treating the natural person using AI as a co-inventor under the Pannu factors. Using this fictitious hypothetical, if the natural person would qualify as a co-inventor with the AI, the invention is patentable with the natural person treated as the sole inventor.

The Pannu factors are whether the natural person: (1) contributed in some significant manner to the conception or reduction to practice 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) does more than merely explain to the real inventors well-known concepts and/or the current state of the art.

In the context of AI, the guidance sets forth helpful examples to determine “significant contribution” from a natural person (reproduced with minor omissions below):

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.

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.

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.

In some situations, a 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.

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, 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.

Takeaways

AI can only be used as a tool.

AI cannot be an inventor and must only be implemented as a tool. The guidance states that “there are no other sections of the Patent Act that support a position that inventions that are created by natural person(s) using specific tools, including AI systems, result in improper inventorship….” It is tempting to use AI as a “person” that can solve problems, and this should be explored when attacking inventorship and taking inventor depositions. Attacking inventorship should focus on any use of AI to conceive a solution to a problem rather than its use as a tool or to implement a solution.

As an example, any prompts along the lines of “how to overcome the limits of Moore’s law” would run afoul of the guidance. Whereas, if an inventor formulated an idea to solve this problem and used AI to help brainstorm solutions, that would potentially be acceptable. From the guidance, “when a natural person invents using an AI system, the conception analysis should focus on the natural person(s).” In the same way inventors would not run an internet search for solutions to a problem and then claim they came up with the solutions found from search results, AI should not be asked to conceive solutions. And if an inventor did use it in this way, this should be pursued to attack inventorship.

It should also be kept in mind that the “significant contribution” analysis applies to every claim in a patent. The guidance states that “[t]here is no requirement for a named inventor to contribute to every claim in an application or patent; a contribution to a single claim is sufficient. However, each claim must have been invented by at least one named inventor. In other words, a natural person must have significantly contributed to each claim in a patent application or patent.” This means an inventor cannot simply come up with an idea and then iterate with AI to conceive additional independent or dependent claims. The “claim by claim” aspect of “significant contribution” is important to keep in mind during litigation when attacking inventorship. Just because an inventor made a “significant contribution” to one claim does not mean the inventor made the same contribution to all the claims.
Records are key for disproving “significant contribution.”

Making a “significant contribution” is rife with factual inquiries. While it remains to be seen how these questions will play out, it is important to note that retention of records on how AI was used/not used in an invention will be key.

In the past (without the use of AI), creating a paper trail during the inventive process was more natural as inventors kept inventor notebooks, notes and records to document what they were working on, ideas they had devised and solutions they had tried. With the use of AI, however, prompts and outputs fly between a natural person and an AI system through an iterative process. This could naturally lend to less-rigorous record retention. Any record that was kept, however, will likely be pursued in litigation. Lack of records showing that AI was used and failing to show that a natural person made a “significant contribution” to an invention could be problematic for inventors. This record could consist of notes and timelines for when the natural person conceived of the invention, prompts used in an AI system (or notes that no AI system was used), and output from the AI system to show how it was used. All of these records could be used to either bolster or attack inventorship.