When is an AI-assisted invention eligible for a patent?

It’s a fine line to walk for applicants with artificial intelligence-assisted inventions who want to secure a patent.

As AI use has become more and more prevalent, the federal government has stepped in to provide clarification on how much of a role AI can have in patentable inventions.

The United States Patent and Trademark Office released guidance in the Federal Register in February detailing the use of AI when it comes to patented inventions.

“While AI-assisted inventions are not categorically unpatentable, the inventorship analysis should focus on human contributions, as patents function to incentivize and reward human ingenuity. Patent protection may be sought for inventions for which a natural person provided a significant contribution to the invention, and the guidance provides procedures for determining the same,” the guidance stated.

So what does that mean for patent attorneys and their clients?

Indianapolis-based attorney Paul Overhauser, who heads Overhauser Law Offices LLC, said he has about 10 clients who use AI, although he’s not sure it’s come up yet as an issue for them in regards to getting patents.

But it seems inevitable as AI’s popularity grows.

It’s not unusual for an inventor to say they need to use AI in some manner, like with a picture, design or drawing related to their invention, Overhauser said.

For Overhauser, a significant thing to come out of the new guidance was that an AI software program cannot, on its own, claim inventorship.

Michael Morris, a partner and chair of the patent and design practice group at Woodard, Emhardt, Henry, Reeves & Wagner LLP, said he frequently has AI-related conversations with clients.

He said most of the firm’s clients are investigating AI, if not using it in their businesses, an interest he expects will continue.

“People are seeing where the rubber hits the road and how they can use AI,” Morris said.

With the new guidance, Morris said one of the biggest issues is what it means for inventors and patent applicants in terms of their duty of disclosure and to disclose information material to patentability.

He said it’s a little bit unclear when applicants need to disclose that they have used AI when preparing their inventions.

Morris mentioned Rule 105 requests, which happen when federal patent examiners request information from applicants on inventor contributions.

Patent attorneys don’t like Rule 105 requests, Morris noted, because they are expensive and often time-consuming.

He said there could be a lot more of those requests in conjunction with the new guidance, depending on how the patent office uses the rule in relation to AI and human contributions.

Guidance spurred by Biden

President Joe Biden issued an executive order on the “Safe, Secure, and Trustworthy Development and Use of Artificial Intelligence” in October 2023.

The order tasked the patent office to publish guidance to patent examiners and applicants addressing inventorship and the use of AI, including generative AI, in the inventive process, including illustrative examples in which AI systems play different roles in inventive processes and how, in each example, inventorship issues ought to be analyzed.

In the guidance, it is noted that AI-assisted inventions are not categorically unpatentable.

It provides instructions on how to determine whether the human contribution to an innovation is significant enough to qualify for a patent when AI also contributed.

“The patent system was developed to incentivize and protect human ingenuity and the investments needed to translate that ingenuity into marketable products and solutions,” Kathi Vidal, Under Secretary of Commerce for Intellectual Property and Director of the U.S. patent office, said in a release. “The patent system also incentivizes the sharing of ideas and solutions so that others may build on them. The guidance strikes a balance between awarding patent protection to promote human ingenuity and investment for AI-assisted inventions while not unnecessarily locking up innovation for future developments. The guidance does that by embracing the use of AI in innovation and focusing on the human contribution.”

Public comments on the guidance are being accepted through May 13.

‘Significant contribution’

Morris called the federal guidance a step in the right direction, but he cautioned that it still leaves some questions, particularly in regards to what constitutes “a significant contribution” by a human inventor.

“It doesn’t tell us exactly what that is,” Morris said.

Robin Dunn, a partner at Taft Stettinius & Hollister LLP, said the guidance takes from prior case law.

In Thaler v. Vidal, a 2022 case heard by the U.S. Court of Appeals for the Federal Circuit, the federal court noted in its opinion that it was being “asked to decide if an artificial intelligence (AI) software system can be listed as the inventor on a patent application.”

The patent office had denied Stephen Thaler’s patent applications, which failed to list any human as an inventor.

Thaler, who develops and runs AI systems that generate patentable inventions, challenged that conclusion in the U.S. District Court for the Eastern District of Virginia, which agreed with the patent office and granted it summary judgment.

On appeal, the federal circuit court affirmed the ruling and found that the Patent Act requires an “inventor” to be a natural person.

“Here, Congress has determined that only a natural person can be an inventor, so AI cannot be,” the circuit court opinion concluded.

Dunn said, with its recently issued guidance, the patent office is wanting to know if a person contributed to the conception of the invention and how much they came up with.

“As a whole, I think it is fairly well defined,” Dunn said.

Dunn said the guidance language notes that it’s not controlling law.

He said AI is starting to come up in conversation with a lot more with clients, but often in a different context from the federal guidance.

“There is an increasing number of applicants that are starting to rely on AI in some aspect of their technology,” Dunn said, although he stressed that AI use is supplementary for inventions most of the time.

He said the applicants are really just using the AI as a tool to generate a more sophisticated analysis area to learn from the data they’re achieving and make more educated predictions.

He said, based on the recent federal guidance, attorneys should ask questions of their clients about AI assistance in every aspect of the invention if they’re considering a patent application.•