AI Implemented Invention Tips Following USPTO Guidance

The United States Patent and Trademark Office (USPTO) and the Court of Appeals for the Federal Circuit have both previously held that an artificial intelligence (AI) system cannot be a sole inventor on a patent application since each inventor must be a human being.¹ The question of how inventions that were at least partially implemented using an AI system would be treated was left unanswered by these holdings.

The USPTO recently issued its “Inventorship Guidance for AI-Assisted Inventions”.²  The USPTO Guidance confirms that AI cannot be an inventor, and each inventor of an AI implemented idea must be a human being who significantly contributed to at least one patent claim.³ The “significant contribution” by each human being raises questions about how much AI can be used to develop a new AI assisted idea for which patent protection is sought. If the AI system is too involved and the human inventor did not “significantly contribute,” then no patent can be granted for the idea.

The USPTO has provided some guiding principles about whether a human being’s contribution to an AI-assisted invention is significant.⁴ Those guiding principles are:

• A human being’s use of an AI system to create an AI-assisted invention does not negate the person’s contribution as an inventor (with the USPTO citing Shatterproof Glass Corp. v. Libbey-Owens Ford Co., 758 F.2d 613, 624 (Fed. Cir. 1985).⁵
• A natural person that 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.⁶
• A significant contribution by a natural person could be shown based on a prompt created by the natural person to elicit a particular solution from the AI system.⁷
• A natural person who merely recognizes and appreciates the output of the AI system as an invention may not be an inventor.⁸
• A person who conducts a successful experiment using the AI system’s output could demonstrate that the person provided a significant contribution.⁹
• In some situations, a natural person who designs, builds or trains an AI system in view of a specific problem to elicit a particular solution could an in inventor.¹⁰
• A person simply owning or overseeing an AI system that is used in the creation for an invention, without any significant contribution, is not an inventor.¹¹

Companies that are considering developing an invention using some AI involvement and would like to protect that invention using patents should keep these tips in mind:

• An invention created solely by AI is not protectable by a patent.
• A human is not an inventor of an AI-assisted invention when the human is merely presenting a problem to the AI system to solve or merely realizing that the AI output is an invention.
• A human may make a significant contribution and be an inventor of an AI-assisted invention if the human is creating prompts for the AI system or training the AI system.
• A human that performs a successful experiment based on the output of the AI system may be making a significant contribution and be an inventor of the AI-assisted invention.

_{¹ Thaler v. Hirshfield, 558 F. Supp.3d 238 (E.D. Va 2021); Thaler v. Vidal, 43 F.4th 1207, 1213 (Fed. Cir. 2022), cert denied, 143 S. Ct. 1783 (2023).}

_{² Federal Register Vol. 89, No. 30, “Inventorship Guidance for AI- Assisted Inventions”, p. 10043 (2024).}

_{³ Id. at Section IV.A., p 10047.}

_{⁴ Id. Section IV.B., pp. 10048-10049.}

_{⁵ Id.}

_{⁶ Id.}

_{⁷ Id.} 

_{⁸ Id.}

_{⁹ Id.}

_{¹⁰ Id.}

_{¹¹ Id.}