Inventorship Determinations in the Era of AI-Assisted Inventions

The evolution of artificial intelligence from traditional predictive algorithms to modern generative AI poses unique challenges to our understanding of inventorship. Unlike its predecessors, generative AI can create novel, original content by identifying patterns in data—a process strikingly similar to human invention.

A pivotal moment in patent law came with the Thaler v. Vidal case, where the Federal Circuit held that under 35 U.S.C. 100(f), only a natural person can be an inventor. See Thaler v. Vidal, No. 21-2347 (Fed. Cir. August 5, 2022). This ruling firmly established that AI, regardless of its capabilities, cannot be recognized as an inventor.

In response to President Biden’s Executive Order on AI, which emphasizes the safe, secure, and trustworthy development of AI technologies, the USPTO issued new guidance on February 13, 2024. See Federal Registrar Vol. 89,  No. 30 (February 13, 2024).

This guidance clarifies the level of human involvement required in AI-assisted inventions for patentability. It revises the application of the Pannu factors, traditionally used to assess joint inventorship, adapting them to scenarios where AI significantly contributes to the creative process. See Pannu v. Iolab Corp., 155 F.3d 1344, 1351 (Fed. Cir. 1998).

Applying the Pannu factors to AI-assisted inventions poses challenges because these factors were designed with the presumption of human inventors, not AI. This extension may inadvertently hinder innovation by imposing limitations on AI’s unique capabilities, which differ significantly from traditional tool-assisted contributions where the human inventor’s role is more distinguishable and essential.

Given this potential misfit, is the application of the Pannu factors to AI-assisted inventions truly sufficient to address the evolving complexities and capabilities of artificial intelligence in the inventive process? Is it important for AI to be used and recognized more broadly as a tool in the inventive process, thereby ensuring equal protection and opportunities for all inventors utilizing this technology? If there is concern about the patent system being inundated with frivolous patents due to AI-assisted inventions, doesn’t the existing “obviousness” analysis already screen for those issues effectively?

Practical Guidance for CAFC Advocacy

I will also share insights on the “dos and don’ts” for oral arguments and brief writing in front of the Court of Appeals for the Federal Circuit (CAFC). These recommendations will be based on my recent experiences as a judicial extern, where I observed firsthand what strategies tend to be effective and which pitfalls to avoid.

Please join us Monday, May 13, 2024 at noon for MCLE. There, Ronnie L. Capaldi, who recently worked at the CAFC, will lead the discussion.