February 23, 2024

The U.S. Patent & Trademark Office (“USPTO”) published inventorship guidance for AI-assisted inventions on February 13, 2024. 89 Fed. Reg. 10043 (Feb. 13, 2024).  The guidance reiterates that current law requires all inventors named on U.S. patents and patent applications to be natural persons.  It goes on to explain, though, that AI-assisted inventions are not categorically unpatentable for improper inventorship.  Significantly, a natural person who creates an invention using an AI system (or other advanced system) is not precluded from qualifying as an inventor (or joint inventor) if that person significantly contributed to the claimed invention, as specified by the Pannu factors (Pannu v. Iolab Corp., 155 F.3d 1344 (Fed. Cir. 1998)). Id. at 10046, 10048.  The guidance applies the Pannu factors even if the AI-assisted invention is conceived by a single natural person.  The USPTO reasons that while these factors are generally applied in the context of joint inventorship, “it follows that a single person who uses an AI system to create an invention is also required to make a significant contribution to the invention, according to the Pannu factors, to be considered a proper inventor.  There is no requirement for a named inventor to contribute to every claim in an application or patent; a contribution to a single claim is sufficient.  However, each claim must have been invented by at least one named inventor.  In other words, a natural person must have significantly contributed to each claim in a patent application or patent.  In the event of a single person using an AI system to create an invention, that single person must make a significant contribution to every claim in the patent or patent application.” Id. at 10048.  The guidance recognizes that there is no bright-line test for determining whether a natural person’s contribution is significant enough to qualify for a patent and provides a non-exhaustive set of principles to “help inform the application of the Pannu factors in AI-assisted inventions” for this purpose. Id.

While the USPTO’s inventorship guidance is focused on AI-assisted inventions, some portions may apply to other types of inventions.