The purpose of this monthly series Patently Enabled is to share simplified patent related information to assist non-patent practitioners in making the best decisions when considering their intellectual property rights.
INVENTORSHIP OF AI-CREATED PATENTABLE TECHNOLOGY
EMPOWERING INDIVIDUALS TO MAKE THE BEST DECISIONS WHEN CONSIDERING THEIR INTELLECTUAL PROPERTY RIGHTS
INVENTORSHIP AND ARTIFICIAL INTELLIGENCE
Every patent application requires that the applicant list the inventors or joint inventors of an invention. An inventor is anyone who contributes to the conception of the invention. As we see a rise in inventions developed through the assistance of artificial intelligence (AI), whether AI systems can be considered an “inventor” is an emerging issue in patent law.
WHO OR WHAT IS AN INVENTOR?
The U.S. Patent and Trademark Office (USPTO) requires an inventor to be an individual.
Recent cases have also held that AI tools may not be named as an inventor on a patent application. These decisions have sparked debate, raising fundamental questions about the capacity of AI to independently “conceive,” thereby being qualified as an inventor.
DISCLOSING INVENTORS
Inventorship is analyzed by determining who conceived the invention as claimed. To be an inventor, a person must contribute to the conception of the claimed subject matter of the invention. Insofar as identifying inventors is concerned, reduction to practice, per se, is irrelevant. Thus, absent a change in the law, an application properly includes, and must include, all of, and only, the name(s) of any individual contributing to the conception of any invention claimed in the application.
In recent guidance, the USPTO acknowledged that there is not an explicit requirement to notify the USPTO when AI tools are used in the inventive process. However, when practicing before the USPTO, applicants and practitioners should be mindful of their duty of disclosure . That is, when the use of an AI tool is material to patentability, that use must be disclosed to the USPTO. For example, each patent claim must result from the significant contribution by a human inventor. Thus, if an AI system is used to draft a patent claim lacking significant contribution by a human inventor, that information must be disclosed to the USPTO when submitted for examination.
USPTO GUIDANCE
CORRECTIVE MEASURES
Practitioners should carefully evaluate if the appropriate inventors have been listed on a patent application. Should an error be discovered, there are ways to correct inventorship, including by submitting: a Corrected Application Data Sheet, a Request for Correction of Inventorship, a Corrected Filing Receipt, and processing fees during the pendency of the Application. It may be possible to correct inventorship after issuance of the patent by proceeding with a Request for a Certificate of Correction, provided the error was made without deceptive intent. In some cases, it may even be possible to correct inventorship in district court after litigation has commenced.
CONTRIBUTORS
Emily Ferriter Russo is an associate at Day Pitney and assists clients in intellectual property litigation (including patents, trade secrets, copyrights, and trademarks) and patent prosecution matters. Emily started Patently Enabled , because she believes in empowering individuals to make the best decisions when considering their intellectual property rights. eferriterrusso@daypitney.com Anthony A. Kassas, an associate at Day Pitney in the Patent Prosecution and Client Counseling Group, assists individuals, startups and established companies to develop and manage their patent portfolios. akassas@daypitney.com
Our Intellectual Property and Technology Group Every day, Day Pitney intellectual property attorneys help clients acquire, secure, transfer, defend, enforce and understand their intellectual property rights. We prosecute patents and trademarks; negotiate and draft agreements for the license and sale of intellectual property rights; litigate intellectual property disputes in federal and state courts around the country, including before the International Trade Commission (ITC) and the U.S. Patent and Trademark Office; and advise clients on the entire array of evolving intellectual property issues modern businesses confront, including workplace policies relating to Internet access and use, social media, and privacy.
Thank you for considering this post, which is a general summary meant to reduce complex issues for general practitioners and inventors. They are not intended to be exhaustive by any means. For any comments, questions, or other inquiries, please contact registered patent attorneys Emily Ferriter Russo or George Chaclas at Day Pitney LLP. This communication is provided for educational and informational purposes only and is not intended and should not be construed as legal advice, nor does its distribution or receipt create an attorney-client relationship. This communication may be deemed advertising under applicable state laws. Prior results do not guarantee a similar outcome. If you have any questions regarding this communication, please contact Day Pitney LLP at 605 Third Avenue, 31st Floor, New York, NY 10158, (212) 297 5800.
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