The U.S. Patent Office issued a formal guidance recognizing that human inventors can use AI in the process of invention and still qualify as inventors if they made a “significant contribution” to the “invention creation process” under the Pannu factors.
The Pannu factors: inventors 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. Courts have found that a failure to meet any one of these factors precludes that person from being named an inventor.”
The USPTO describes this class of inventions as “AI-assisted inventions.”
The USPTO provides 5 non-exhaustive principles to help inventors understand when the Patent Office will recognize that a human made a significant contribution to an AI-assisted invention.
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.53 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.54 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.55 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.56 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.57
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.58 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.59 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.
We have highlighted some of the key passages in the PTO’s guidance below.