In the fall of 2023, the Biden Administration issued the Executive Order on the Safe, Secure, and Trustworthy Development and Use of Artificial Intelligence.[1] In section 5.2 of the order, the administration charged the Under Secretary of Commerce for Intellectual Property and Director of the United States Patent and Trademark Office (USTPO) with three directives:

1. Publish guidance to USPTO patent examiners and applicants addressing inventorship and the use of AI, including generative AI, in the inventive process and how inventorship issues ought to be analyzed;

2. Issue additional guidance to address other considerations at the intersection of AI and IP, which could include updated guidance on patent eligibility to address innovation in AI and critical and emerging technologies; and

3. Consult with the Director of the United States Patent Office and issue recommendation to the President on potential executive actions relating to copyright and AI.

Accordingly, the USPTO responded to its first directive and issued its Inventorship Guidance for AI-Assisted Inventions on February 13, 2024.[2] The guidance provides that AI-assisted inventions are not categorically unpatentable. Instead, an analysis utilizing the Pannu factors determines if the human inventor(s) has made a significant contribution to each claim in the patent or patent application. The USPTO also provides examples in its guidance, as well as more specific examples on its website.[3]

In the fall of 2022, the Federal Circuit in Thaler v. Vidal affirmed the holding “that only a natural person can be an inventor.”[4] This holding remains aligned with the policy that patents function to incentivize and reward human ingenuity. However, the court did not answer the question of AI as a joint inventor.

In its guidance, the USPTO makes clear that the term “individual” throughout the MPEP refers to a human being.[5] When naming the inventor(s), the inclusion of AI or any system will render the invention unpatentable.[6] While there is no requirement for a named inventor to contribute to every claim in an application,[7] at least one named inventor must have invented each claim.[8] Therefore, in the case of an individual working solely with an AI system, the individual must significantly contribute to every claim. The guidance tells us that to significantly contribute means to meet the Pannu factors.

Under the Pannu factors, each inventor must: “(1) contribute in some significant manner to the conception or reduction to practice of the invention, (2) make 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) do more than merely explain to the real inventors well-known concepts and/or the current state of the art.”[9] In its footnote, the guidance explains that the mention of reduction to practice in the Pannu factors is an acknowledgement of the simultaneous conception and reduction to practice doctrine used in unpredictable technologies.[10] Applicants are reminded that the main inquiry is that of conception.[11] The Pannu factors are not a basis to conclude that reduction to practice, alone, is sufficient to demonstrate inventorship.[12]

To assist applicants and USPTO personnel in determining inventorship, the guidance provides a non-exhaustive list of “guiding principles” for the application of the Pannu factors in AI-assisted inventions:

1. The use of AI does not negate a person’s contributions as an inventor if the person contributes significantly to the invention.

2. Merely presenting a problem to an AI system may not be a significant contribution. However, a significant contribution could be found in the construction of the prompt in view of a specific problem to elicit a particular solution from the AI.

3.Although reducing an invention to practice alone is not a significant contribution, a person who makes a significant contribution to the output to create an invention may be a proper inventor, even if that person is unable to establish conception until the invention has been reduced to practice.

4. The designing, building, or training of the AI system in view of a specific problem to elicit a particular solution may be a significant contribution to the invention created with the AI system.

5. 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.[13]

These guiding principles attempt to alleviate some uncertainty surrounding “a significant contribution” under the Pannu factors. Applicants would be wise to keep the Pannu factors, as well as these principles, in mind early in the invention process. In addition, an inventorship analysis will assist an applicant in drafting the claims, as the USPTO requires an inventor (or one of the joint inventors) to significantly contribute to each claim.

As for the various duties of patent owners and applicants, the USPTO claims it is not changing or modifying its duty of disclosure.[14] However, the USPTO reminds those of their existing duty of disclosure and its applicability to the inventorship inquiry. Parties have a duty to disclose to the USPTO information that raises a prima facie case of unpatentability or that is inconsistent with a position an applicant takes in asserting inventorship or opposing its rejection.[15] This information could include evidence of an inventor’s lack of a significant contribution to the invention because the person’s purported contribution(s) was made by an AI system.

According to the USPTO, the duty of reasonable inquiry will remain the same, as well.[16] Identical to FRCP 11(b), the duty calls for an “inquiry reasonable under the circumstances” to ensure that (1) the paper is not being presented for any improper purpose; (2) the legal contentions are warranted by law; (3) the allegations and other factual contentions have evidentiary support; (4) and the denials of factual contentions are warranted on the evidence.[17] As for AI-assisted inventions, this inquiry should include questions about whether and how AI is being used in the creation process. Applicants and patent practitioners should conduct their own assessment of whether the contributions made by the natural person(s) rise to the level of inventorship as expressed in the USPTO’s guidance.

While the continuous evolution of AI will likely require further modifications to the idea of “inventorship,” this guidance will likely lead the courts’ analyses for now. The USPTO’s five guiding principles given above aim to counteract the ambiguity of a significant contribution in the Pannu factors. Applicants and practitioners should utilize these principles early in the application process as they are likely to appear in the litigation of AI-assisted inventions. For further assistance, the USPTO provides more specific examples of significant and insignificant contributions on its website.[18] The period for public comment on this guidance will remain open until May 13, 2024.

Special thanks to Michael Doggett, LSU Law Class of 2024, for his research and assistance in writing this article.

[1] Executive Order on the Safe, Secure, and Trustworthy Development and Use of Artificial Intelligence | The White House

[2] 89 Fed. Reg. 10043 (Feb. 13, 2024).

[3] AI-related resources | USPTO (Example 1 and Example 2 under “Inventorship”).

[4] Thaler v. Vidal, 43 F.4th 1207, 1213 (Fed. Cir. 2022), cert denied, 143 S. Ct. 1783 (2023).

[5] 89 Fed. Reg. 10046 (Feb. 13, 2024) (citing Thaler v. Vidal, 43 F.4th at 1211).

[6] Id.

[7] MPEP 2109.01.

[8] 35 U.S.C. 115(a) (“An application for patent that is filed under section 111(a) or commences the national stage under section 371 shall include, or be amended to include, the name of the inventor for any invention claimed in the application.”) (emphasis added).

[9] Pannu v. Iolab Corp, 155 F.3d 1344, 1351 (Fed. Cir. 1998).

[10] 89 Fed. Reg. 10047, fn.32 (Feb. 13, 2024).

[11] Id.

[12] Id.

[13] 89 Fed. Reg. 10048 (Feb. 13, 2024) (paraphrased).

[14] 89 Fed. Reg. 10049 (Feb. 13, 2024).

[15] 35 U.S.C. 101.

[16] 89 Fed. Reg. 10050 (Feb. 13, 2024).

[17] 37 CFR 11.18(b)(2).

[18] AI-related resources | USPTO (Example 1 and Example 2 under “Inventorship”).