http://ipkitten.blogspot.com/2024/02/inventorship-guidance-for-ai-assisted.html
On 12 February 2024, the United States Patent and Trademark Office (USPTO) announced with a press release the publication of its Inventorship Guidance for
AI-Assisted Inventions (Guidance). The Guidance has been published and will be effective from
13 February 2024.
The
Guidance “provides instructions to examiners and stakeholders on how to
determine whether the human contribution to an innovation is significant enough
to qualify for a patent when AI also contributed. The guidance embraces the use
of AI in innovation and provides that AI-assisted inventions are not
categorically unpatentable. The guidance instructs examiners on how to
determine the correct inventor(s) to be named in a patent or patent application
for inventions created by humans with the assistance of one or more AI systems”.
The
content
Here is the (non-exhaustive) list of principles
for determining whether a natural person’s contribution in AI-assisted
inventions is significant:
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;
2.
The natural person can be listed as the inventor or joint inventor if
the natural person contributes significantly to the AI-assisted invention;
3.
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;
4.
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;
5.
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;
6.
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;
7.
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;
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 further examines the relevance of
the so called Pannu test (Pannu v. Iolab Corp.) in determining inventorship in the
context of AI-assisted inventions, namely: a) contribution by the inventor in
some significant manner to the conception of the invention; 2) contribution by
the inventor to the claimed invention
that is not insignificant in quality, when that contribution is measured
against the dimension of the full invention, 3) more than merely explanation to
the real inventors well-known concepts and/or the current state of the art.
Lastly, the
Guidance contains some specific examples of hypothetical situations and how it
would apply there to further assist examiners and applicants.
The USPTO has organized a
public webinar on 5 March 2024
from 1-2 p.m. ET and is
seeking public comments (with 11 questions) on the Guidance with a deadline of 13
May 2024. Comments shall be provided through the Federal eRulemaking Portal here.
Fresh
comment
From a first reading, the Guidance appears to
be in line with the US Dabus decision, while there is lack of the requirement
for the applicant of an AI-assisted invention to disclose to the USPTO that AI
was used as part of the inventive process, as instead requested by the US Copyright Office (USCO) for the registration of works whose creation implies AI, see The
IPKat here. It
will then be interesting to see reactions to this newly published Guidance as
well as to the public comments.
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