Only “natural persons” can be named “inventors” on U.S. patents. But last month, the U.S. Patent and Trademark Office (USPTO) issued guidance stating that AI-assisted inventions may be patentable if a natural person makes a "significant contribution" to the claimed subject matter. As AI tools become increasingly prevalent across industries, patent applicants and their counsel will need to understand precisely what contributions AI tools have made in conceiving inventions and weight those against human inventor contributions. 

Risks of AI-Assisted Inventions

Failing to determine whether a named inventor has “significantly contributed" to an AI-assisted invention may lead to a patent application being rejected, or even to loss of patent rights after issuance. For example, the USPTO guidance suggests that patent examiners should reject applications if evidence indicates that the named inventor's contribution was not significant to the claimed invention. Moreover, an issued patent may be invalidated if a factfinder (such as the U.S. Patent Trial and Appeal Board (PTAB) or a district court) retrospectively deems the inventor's contribution insignificant compared to that of an AI tool. 

Traditionally, patent owners could correct inventorship for misnamed human inventors (before or even after issuance). But with AI-assisted inventions, patent owners cannot name a new inventor to correct inventorship if no natural person made a significant contribution. Accordingly, determining inventors' roles in the application phase may save patent owners significant time, resources and patent rights down the road.

What Qualifies as a “Significant Contribution" to a Claimed Invention?

The USPTO's guidance references the Pannu factors (Pannu v. Iolab Corp., 155 F.3d 1344, 1351 (Fed. Cir. 1998)), which courts have use to determine whether each individual joint inventor has significantly contributed to an invention. Under those factors, each individual inventor must:

1. Make a significant contribution to the conception of the invention;
2. Contribute in a way that is not insignificant in quality when measured against the full invention; and
3. More than merely explain to the real inventors well-known concepts or the current state of the art.

Each human joint inventor need not contribute to every claim in a patent. But AI tools assisting in an invention are not simply a joint human inventor. Instead, for AI-assisted inventions, at least one human inventor must significantly contribute to every claim in an application for those claims to be patentable. For this reason, practitioners and applicants should take care to confirm that named human inventors have contributed significantly to ALL claims—not just independent claims.

Examples of Significant (and Not-So-Significant) Contributions

While determining whether a human inventor has significantly contributed to an invention is a case-specific factual assessment, the USPTO offers several guiding principles as a framework:

• Merely presenting a problem to an AI system is not enough to be an inventor of an invention identified from the output of an AI system. However, if the person constructs a prompt in view of a specific problem to elicit a particular solution from the AI system, a significant contribution may be demonstrated.
• Reducing an invention to practice alone is not a significant contribution. Accordingly, merely recognizing and appreciating the output of an AI system is not enough for invention. However, a person may be an inventor if they take the output of an AI system and make a significant contribution to create an invention. 
• Even if not involved in every step leading to conception, a person who develops a crucial building block for a claimed invention may still be considered an inventor. In some situations, designing, building or training an AI system in view of a specific problem to elicit a particular solution could be enough if those activities are a significant contribution to AI-assisted invention.

Undoubtedly, as inventors continue using AI tools in ever-growing applications and capacities, the framework for what the USPTO considers a “significant contribution” will continue to evolve.   

Read the full text of the USPTO's guidance here: