This article discusses potential pitfalls of using AI when creating an invention.

1. Summary

Whether an invention created using AI could be patented depends on what role the AI performed.

The U.S. Patent and Trademark Office (USPTO) has taken the position that using AI does not change the existing inventorship analysis.

Although AI may be used during the invention process, a human has to make a "significant contribution." For example, if after a human developed an algorithm, then if the AI generates the software that implements the algorithm, the algorithm is potentially patentable. On the other hand, if after prompting AI with a problem, AI created the algorithm to solve the problem then the algorithm is not patentable. For situations between these examples, a legal analysis to determine if a human made a "significant contribution" is required.

As the courts are not bound by the USPTO position on inventorship, there is some risk in using the USPTO guidance. The USPTO guidance should allow patents to be obtained from the USPTO but a judge or jury could take a different position than what the USPTO took.

2. Inventorship in General

An inventor is a human who conceived of the invention. MPEP 2109(II) states:

The definition for inventorship can be simply stated: "The threshold question in determining inventorship is who conceived the invention. Unless a person contributes to the conception of the invention, he is not an inventor"

In a patent application, each inventor must be a human. MPEP 2109(VII) states:

The inventor or joint inventors named on a patent or patent application must be a natural person, i.e., a human being.

The invention must be conceived by a human. MPEP 2138.04 states:

Conception has been defined as "the complete performance of the mental part of the inventive act" and it is "the formation in the mind of the inventor of a definite and permanent idea of the complete and operative invention as it is thereafter to be applied in practice...."

To be joint inventors in a patent application, each inventor must contribute some matter to at least one claim in the patent application. In other words, each inventor must be able to point to something in the claims they contributed. MPEP 2109.01 states:

A joint inventor or coinventor need not make a contribution to every claim of a patent; a contribution to one claim is enough.

3. Inventorship with AI

The USPTO has taken the position that the use of AI does not change the inventorship analysis. A human still has to conceive of the invention.

The USPTO uses the Pannu factors to determine if a person is or is not an inventor. The Pannu factors were developed from the Federal Circuit case Pannu v. Iolab Corp., 155 F.3d 1344, 1351 (Fed. Cir. 1998). The USPTO describes the Pannu factors in the presentation titled "Inventorship guidance for AI-assisted inventions" dated March 5, 2024:

1. Conception: Each named inventor must contribute in some significant manner to the conception (or reduction to practice) of the claimed invention
2. Quality of contributions: Each named inventor must 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
3. Mere explanation of the state of the art: An inventor must do more than merely explain to the real inventors well-known concepts and/or the current state of the art.

The USPTO published a notice in the Federal Register titled "Inventorship Guidance for AI-Assisted Inventions" on February 12, 2024 that included guiding principles regarding AI inventorship. The guiding principles are:

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. The natural person can be listed as the inventor or joint inventor if the natural person contributes significantly to the AI-assisted invention.
2. Merely recognizing a problem or having a general goal or research plan to pursue does not rise to the level of conception. 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. However, a significant contribution could be shown by the way the person constructs the prompt in view of a specific problem to elicit a particular solution from the AI system.
3. Reducing an invention to practice alone is not a significant contribution that rises to the level of inventorship. Therefore, 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. However, 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. Alternatively, in certain situations, a person who conducts a successful experiment using the AI system's output could demonstrate that the person provided a significant contribution to the invention even if that person is unable to establish conception until the invention has been reduced to practice.
4. A natural person who develops an essential building block from which the claimed invention is derived may be considered to have provided a significant contribution to the conception of the claimed invention even though the person was not present for or a participant in each activity that led to the conception of the claimed invention. 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.
5. 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. Therefore, 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 USPTO stated the standard for inventorship with AI has not changed in the "FAQs on Inventorship Guidance for AI-assisted Inventions":

The Guidance does not create a heightened standard for inventorship. The Guidance explains that the inventorship analysis should focus on the human contribution, as patents function to incentivize and reward human ingenuity. Regardless of the technology used as a tool in the invention-creation process, the inventorship analysis focuses on the human contribution to the conception of the invention. Existing inventorship law applies regardless of whether an inventor uses a specific technology, such as AI, to assist in the creation of an invention.

Also, in the presentation titled "Inventorship guidance for AI-assisted inventions", the USPTO provides an example with three scenarios that explore inventorship with AI.

In the first scenario, two engineers prompt the AI "[c]reate an original design for a transaxle for a model car, including a schematic and description of the transaxle." The engineers reviewed the AI output. The AI output is not patentable because the engineers did not make a significant contribution.

In the second scenario, an engineer takes the AI output and selects steel as a building material. Steel is commonly used to build model car transaxles. The AI output and selection of steel is not patentable because the engineer did not make a significant contribution.

In the third scenario, two engineers have AI create an initial design. The engineers start with the initial design and create a new design. The new design is patentable because the engineers made a significant contribution.

4. Courts Are Not Required to Follow USPTO Guidance

As the courts are not bound by the USPTO guidance on inventorship, there is some risk in using the USPTO guidance. The USPTO guidance should get a patent application to an issued patent, but a judge or jury could later take a different position.