Intellectual Property Insights from Fishman Stewart
Newsletter – Volume 25, Issue 14
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Protecting AI-Assisted Inventions
In a previous edition of Fish Tank, we discussed policy considerations surrounding inventorship when AI was used in the innovation.
The US Patent and Trademark Office (“USPTO”) has now issued guidance explaining that AI-assisted inventions are not categorically unpatentable, embracing the use of AI in innovation, but that only humans can be inventors and must make a significant contribution to the invention.
The ultimate inquiry of inventorship is resolved using the so-called Pannu factors, which are used to assess whether a person is an inventor (regardless of the use of AI). The USPTO’s guidance on AI-assisted inventions turns on whether a human made a significant contribution at the stage of conception of the invention. In this, the USPTO issued five (5) guiding principles to help resolve the question of inventorship:
- A person’s use of an AI system in creating an AI-assisted invention does not negate the person’s contribution as an inventor;
- Merely recognizing a problem or having a general goal or research plan to pursue does not rise to the level of conception (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);
- Reducing an invention to practice alone is not a significant contribution that rises to the level of inventorship;
- Developing an essential building block from which the claimed invention is derived may be a sufficient contribution, even if not present in each activity that led to conception (for example, a nature person who designs, builds, or trains an AI system in view of a specific problem to elicit a particular solution could be an inventor); and
- 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 (i.e., merely owning or overseeing an AI system is not enough).
As with many legal issues, there is no bright-line test and the USPTO acknowledges that the determining whether a person’s contribution in AI-assisted inventions is “significant” may be difficult to ascertain. With this in mind, the USPTO has established an AI-related resources webpage, including guidance on practitioner use of AI, inventorship, subject matter eligibility, disclosure requirements, and an AI patent dataset identifying US patents and published applications that include AI.
Considering the uncertainty over just how much AI assistance is too much, keeping a record of the prompts used in AI systems and the resulting idea produced by the AI system during creative sessions could help tip the balance in favor of human ingenuity by contrasting the final product/invention with the AI-system output.
Kameron is a partner and registered patent attorney at Fishman Stewart PLLC, specializing in Intellectual Property with over a decade of experience counseling clients on patent, trademark, and related contractual matters. Kameron’s practice encompasses all aspects of preparing, procuring, and enforcing worldwide IP rights. Check out his full bio here.
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