AI and Inventorship: Navigating the Uncertain Future of Patent Law

By: Lara Miller

The expanding role of artificial intelligence (AI) in society has been accompanied by significant concerns and unanswered questions across numerous sectors. One sector in which these questions have become particularly apparent is the patent system, where AI’s influence has begun to challenge longstanding doctrinal foundations. The patent law system was designed to provide exclusive rights to inventors for their novel, useful, and non-obvious inventions.[1] One of the primary requisites needed to obtain a patent is that the applicant must be the actual inventor of the invention that they are trying to get patented.[2] As a result of the increasing use of AI during the inventive process, the United States Patent and Trademark Office (USPTO) has been confronted with numerous questions and challenges about how AI-assisted inventions should be treated.

In February of 2024, the USPTO issued inventorship guidance to provide clarity on the patentability of AI-assisted inventions.[3] The guidance emphasized that the patent system aims to incentivize human ingenuity while simultaneously encouraging the public sharing of information that others can build upon.[4] The guidance also recognizes that the use of AI in the inventive process may be appropriate, but it places its primary focus on identifying and evaluating the human contribution.[5] Accordingly, questions about human contribution lead back to the foundational requirements which define who may be named as an inventor. The USPTO has previously published revisions to the Manual of Patent Examining Procedure (MPEP) emphasizing that any “inventor” “joint inventor” or “coinventor” listed on a patent application must be a natural person.[6]

The February inventorship guidance clearly establishes that AI or any other non-natural persons cannot be listed as an inventor on patent applications, but the guidance provided for AI-assisted inventions is much murkier.[7] A natural person will qualify as an inventor if they significantly contributed to the invention.[8] To determine whether an individual has contributed in some significant way, courts regularly look at three factors. Each inventor must: “(1) contribute in some significant manner to the conception or reduction to practice of the invention, (2) 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, and (3) do more than merely explain to the real inventors well-known concepts and/or the current state of the art.”[9] Moreover, courts have established that individuals must satisfy all three requirements and a failure to meet even one of the factors will prevent the individual from being named an inventor.[10] The USPTO has also explained that there is not a heightened standard of inventorship for AI-assisted inventions and there is no additional duty on inventors to disclose the extent to which they used AI to develop the invention.[11]

Ultimately, the current patent inventorship standards leave the treatment of AI-assisted inventions in a state of uncertainty. On one hand, applying the three-factor significant contribution test, makes the insistence on exclusively human inventorship feel increasingly strained, as AI systems in many cases appear capable of satisfying each of the requisite factors. On the other hand, there are persuasive arguments for maintaining the current inventor boundaries. Limiting inventorship to natural persons encourages the incentive structure of patent law and ensures accountability for the act of an invention. It also helps the USPTO avoid the practical and legal complexities of granting legal rights to non-human actors. Whether these justifications will remain sufficient as AI becomes more advanced and more prominent in the inventive process remains an open question. What is clear, however, is that the patent system will need to continue evolving and adapting to uphold its core values and objectives.

 

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[1] 35 U.S.C. § 101.

[2] Id.

[3] Inventorship Guidance for AI-Assisted Inventions Notice, 89 Fed. Reg. 10044 (Feb. 13, 2024).

[4] Id.

[5] Id.

[6] Id.

[7] Id.

[8] Inventorship Guidance for AI-Assisted Inventions Notice, 89 Fed. Reg. 10044 (Feb. 13, 2024).

[9] Pannu v. Iolab Corp., 155 F.3d 1344, 1351 (1998).

[10] Inventorship Guidance for AI-Assisted Inventions Notice, 89 Fed. Reg. 10044 (Feb. 13, 2024).

[11] FAQs on Inventorship Guidance for AI-assisted Inventions, U.S. Pat. & Trademark Off. (Jan. 16, 2025, 9:27 AM), https://www.uspto.gov/initiatives/artificial-intelligence/faqs.