The rise of Artificial Intelligence (AI) in the past decade has revolutionized industries and sparked fierce debate within the sector of intellectual property law. Attributing inventorship for creations born from the collaboration between human ingenuity and AI’s computational power has become a pressing issue.
The United States Patent and Trademark Office (USPTO) issued the AI Inventorship Guidance, a roadmap intended to navigate this uncharted territory for inventors, applicants, and their attorneys in February 2024. The guidance presents both opportunities and challenges in this evolving landscape. The guidance indicates generative AI cannot be named as an inventor on a patent application. This aligns with the precedent set in the recent case Thaler v. Vidal, wherein the United States Court of Appeals of the Federal Circuit established that only natural persons can be recognized as inventors. This decision underscores the irreplaceable role of human creativity and ingenuity in the invention process
The “Significant Contribution” Standard: Striking a Balance
The USPTO emphasizes the need for a human inventor to make a substantial contribution to the claimed invention for it to be patentable. This “significant contribution” standard is broad, allowing for flexibility in evaluating the human element across various AI-assisted inventions.
For instance, an inventor who simply identifies a problem and feeds data into an AI system without actively shaping the inventive process likely would not meet this standard. Conversely, an inventor who actively interacts with the AI system, refines prompts, interprets outputs, and integrates them into a novel solution is likely to be considered a significant contributor.
The guidance places the burden of proof on the applicant to demonstrate a human inventor’s significant contribution. This can be a hurdle, especially if AI actually played a more substantial role than the human did. The USPTO can request additional information regarding inventorship, potentially triggering a duty of candor for applicants. This means applicants must disclose all relevant information, even if it might raise questions about the level of human contribution.
To navigate this complex landscape effectively, inventors and their attorneys should work together to maintain detailed records throughout the invention process. This includes meticulous documentation of the human inventor’s involvement in design meetings, details of experimentation, and logs of prototype development. The application should showcase the human inventor’s skills and knowledge, emphasizing their contribution to the inventive concept. Additionally, inventors and their counsel should strive for transparency. It would be crucial to avoid scenarios where the AI’s role in devising the invention remains a mystery (black box) that would rightfully draw scrutiny from patent examiners. Disclosing details like input data, training data, and the neural network architecture used by the AI system demonstrates a good faith effort.
Ultimately, the AI Inventorship Guidance offers a valuable starting point, but several uncertainties remain. The “significant contribution” standard is subjective, potentially leading to inconsistencies in application review. Additionally, the guidance does not address ownership of inventions created with AI, a crucial issue for collaboration between inventors and AI developers.