Introduction
The intersection of artificial intelligence (AI) and patent law presents complex challenges, particularly concerning inventorship and patent eligibility [1]. As AI technology becomes increasingly integral to the invention process, legal frameworks must adapt to address issues related to human contribution, ownership [1] [2], and the patentability of AI-assisted innovations [1] [3].
Description
Inventorship issues arise when attempting to patent technology developed with AI assistance [2], as well as when seeking to patent AI technology itself [2]. The US Court of Appeals for the Federal Circuit has determined that inventorship is limited to natural persons [2], as established in Thaler v [2]. Vidal [2] [3], where the USPTO rejected a patent application listing an AI system as the sole inventor [2]. In February 2024 [2] [3], the USPTO reiterated that only natural persons can be inventors [2], emphasizing that the analysis of inventorship should focus on whether a human made a “significant contribution.” This guidance confirms that patent protection is available for inventions made by humans with AI assistance, provided the human contributes significantly to the invention [2] [3].
A significant contribution is necessary for a natural person to be listed as an inventor; merely inputting a general prompt into an AI system does not qualify [2]. Instead, it is the construction of a prompt that elicits a specific solution or the significant modification of the AI’s output that may demonstrate such contribution. Recognition of an AI system’s output as an invention does not automatically confer inventorship rights [1]. Ownership or control over an AI system does not establish inventorship for inventions generated by that system [1].
Patent eligibility for AI-related inventions is scrutinized under the Alice framework [2], which assesses whether a patent is directed to an abstract idea without sufficient additional elements [2]. Following the Supreme Court’s decisions in Mayo Collaborative Services v. Prometheus Laboratories [3], Inc. and Alice Corp [1] [3]. v. CLS Bank [1] [3], courts have closely examined computer- and software-based patents for eligibility [1], requiring compliance with the two-prong Alice test [1]. AI claims often face challenges under § 101 of the Patent Act [2], particularly when they emulate human thought processes or lack specific features or algorithms. Courts have ruled that claims directed to abstract ideas [2], such as those involving mathematical relationships or result-oriented inventions like graphical user interfaces and business decision optimization, may be deemed ineligible for patent protection [2].
In July 2024 [1] [2], the USPTO issued updated guidance to assist in evaluating the patent eligibility of AI inventions [1] [2], focusing on distinguishing claims that recite abstract ideas from those that merely involve them [2]. Claims that integrate a judicial exception into a practical application may not be considered directed to an abstract idea [1] [2], especially if they demonstrate improvements in technology [2]. Potential new legislation may seek to modify the USPTO guidance and the Federal Circuit’s interpretation [3], possibly specifying the minimum level of human contribution necessary for the inventive process or redefining the term “inventor” in 35 US Code § 100(f) [3]. Additionally, there may be efforts to reform 35 US Code § 101 [3], which pertains to the subject matter eligible for patent protection [3].
To address the evolving landscape of AI and intellectual property, key stakeholders [4], including legal advisors and representatives from major corporations and academic institutions [4], are engaging in discussions about the current state of AI technology in the invention creation process [4]. These discussions emphasize how to handle inventions significantly contributed to by AI [4], highlighting the importance of understanding the implications of AI-driven innovation on intellectual property rights.
Companies should strategically consider the AI functionalities they incorporate into their innovations and meticulously document their use [1] [2]. This documentation can take various forms [1], such as daily notes or milestone records [1], and is crucial for supporting claims of inventorship and providing necessary written descriptions. Adhering to recent legal precedents regarding the patentability of AI inventions is essential for drafting effective claim language and identifying technological advancements to safeguard intellectual property. When applying for patents for AI-assisted inventions [1], companies should investigate how AI was utilized in the invention process and evaluate whether the contributions of natural persons are significant enough to establish inventorship [1]. Relevant results should be disclosed to the USPTO as needed [1].
While there is no outright prohibition on the patentability of AI-related inventions [1], certain subject matter may be more likely to be deemed eligible [1]. To mitigate the risk of § 101 rejections [1], applicants should clearly articulate improvements over prior art and connect those improvements to their patent claims [1]. Internal education for technical teams is crucial; companies should train their teams on best practices regarding inventorship and patent eligibility [1], emphasizing the importance of tracking AI tool usage and documenting AI’s role in the development process [1]. This training can be integrated into onboarding and tailored to the specific needs of the team [1].
Moreover, unanticipated intellectual property challenges are emerging from AI-driven innovation [4], particularly concerning enforcement issues and the implications of black-box AI on IP litigation [4]. Experts from various sectors, including the Department of Justice and law firms, are examining the impacts of these challenges on IP enforcement and the broader legal landscape [4].
The advent of generative AI has transformed how companies develop technology and innovate [1]. It is essential for companies to implement measures to secure ownership of new technological advancements while continuing to innovate and protect their intellectual property [1]. Notable speakers [4], including senior legal advisors from the USPTO and professionals with extensive experience in technology commercialization and AI research, contribute to a comprehensive understanding of the intersection of AI and intellectual property law [4].
Conclusion
The integration of AI into the invention process necessitates a reevaluation of existing patent laws to ensure they adequately address the complexities introduced by AI technologies. As AI continues to evolve, it is crucial for legal frameworks to adapt, ensuring that inventorship and patent eligibility criteria reflect the realities of AI-assisted innovation. Companies must remain vigilant in documenting AI contributions and educating their teams to navigate the evolving landscape of intellectual property rights effectively.
References
[1] https://www.fr.com/insights/thought-leadership/blogs/protecting-innovation-in-an-ai-powered-age-patents/
[2] https://www.jdsupra.com/legalnews/protecting-innovation-in-an-ai-powered-9642916/
[3] https://ipwatchdog.com/2024/12/29/key-ip-issues-next-president-congress-tackle-ai-patent-subject-matter-eligibility/id=184097/
[4] https://www.uspto.gov/about-us/events/aiet-partnership-series-3-ai-driven-innovation
