As a patent attorney experienced in transformer-based AI architectures and large language models (LLMs), I want to share insights on the evolving landscape of AI-assisted inventions. This is particularly relevant in view of the 2024 publication of the USPTO’s AI Inventorship Guidance (“Inventorship Guidance for AI-Assisted Inventions,” published February 13, 2024, 89 FR 10043, available at https://www.federalregister.gov/documents/2024/02/13/2024-02623/inventorship-guidance-for-ai-assisted-inventions), which provides guidance to inform practitioners and the public about inventorship for AI-assisted patent claims.
To paraphrase the AI Inventorship Guidance, all patent claims must have significant contribution from a human inventor, with each claim requiring at least one natural person inventor who made a significant contribution to the claimed invention. When AI systems are used in claim drafting, practitioners must be particularly vigilant if the AI introduces alternate embodiments not contemplated by the named inventors, as this requires careful reevaluation of inventorship to ensure proper attribution. Additionally, if any claims are found to lack proper human inventorship, where no natural person made a significant contribution, then those claims must be either canceled or amended to reflect proper inventorship by a human.
Human Contribution to Invention
The USPTO requires that at least one human inventor demonstrates significant involvement in the invention process. This contribution must extend beyond presenting a problem to the AI or merely recognizing the AI’s output.
Compliance with Pannu Factors
To qualify as an inventor, a person must meet the Pannu Factors:
- Significant contribution to conception or reduction to practice of the invention.*
- Contributions that are not insignificant relative to the entire invention.
- Activities beyond explaining well-known concepts or reiterating prior art.
Substantial Contribution to the Claimed Invention
The human inventor’s input must be meaningful when evaluated against the complete scope of the claimed invention. Examples of substantial contributions include:
- Constructing specific AI prompts designed to solve targeted problems.
- Expanding on AI-generated outputs to develop a patentable invention.
- Designing or training AI systems tailored for specific problem-solving purposes.
What Constitutes Inventorship in AI-Assisted Innovations?
Several activities can establish inventorship in AI-assisted technologies:
- Creating detailed prompts intended to generate targeted solutions from AI systems.
- Contributing substantively beyond AI outputs to finalize the invention.
- Conducting experiments based on AI results in unpredictable fields and recognizing the inventive outcomes.
- Designing, building, or training AI systems to address specific challenges.
What Does Not Constitute Inventorship?
Certain activities fail to meet the threshold for inventorship, such as:
- Recognizing a problem or presenting a general goal to the AI.
- Providing only basic input without significant engagement in problem-solving.
- Simply reducing AI-generated outputs to practice.
- Claiming inventorship based solely on oversight or ownership of the AI system.
Practical Strategies for Patent Practitioners
- Document Human Contributions: Maintain detailed records of human involvement in the invention process to establish inventorship.
- Evaluate Claim Scope: Ensure each claimed element is supported by sufficient human input to meet the USPTO’s requirements.
- Correct Inventorship Issues Promptly: Address discrepancies in inventorship to protect the patent’s validity and enforceability.
Drawing from my experience guiding AI-assisted innovations through the patent process, I have seen how vital these strategies are for robust IP protection.
* While the Pannu factors do mention reduction to practice, the Federal Register clarifies that “[t]he fact that a human performs a significant contribution to reduction to practice of an invention conceived by another is not enough to constitute inventorship” (https://www.federalregister.gov/documents/2024/02/13/2024-02623/inventorship-guidance-for-ai-assisted-inventions). Reduction to practice without simultaneous conception (such as in unpredictable arts) is insufficient to demonstrate inventorship. Inventorship continues to require human conception of the invention.