Inventorship Guidance for AI-Assisted Inventions, 10043-10051 [2024-02623]

Agencies

• DEPARTMENT OF COMMERCE
• Patent and Trademark Office

[Federal Register Volume 89, Number 30 (Tuesday, February 13, 2024)]
[Notices]
[Pages 10043-10051]
From the Federal Register Online via the Government Publishing Office [www.gpo.gov]
[FR Doc No: 2024-02623]


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DEPARTMENT OF COMMERCE

Patent and Trademark Office

[Docket No. PTO-P-2023-0043]


Inventorship Guidance for AI-Assisted Inventions

AGENCY: United States Patent and Trademark Office, Department of 
Commerce.

ACTION: Examination guidance; request for comments.

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SUMMARY: Pursuant to the ``Executive Order on the Safe, Secure, and 
Trustworthy Development and Use of Artificial Intelligence'' (October 
30, 2023), the United States Patent and Trademark Office (USPTO or 
Office) is

[[Page 10044]]

issuing inventorship guidance for inventions assisted by artificial 
intelligence (AI). The guidance provides clarity for USPTO stakeholders 
and personnel, including the Central Reexamination Unit and the Patent 
Trial and Appeal Board (PTAB or Board), on how the USPTO will analyze 
inventorship issues as AI systems, including generative AI, play a 
greater role in the innovation process. This guidance explains that 
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. Finally, the guidance discusses 
the impact these procedures have on other aspects of patent practice. 
The USPTO is seeking public comments on this inventorship guidance for 
AI-assisted inventions.

DATES: 
    Applicability Date: The inventorship guidance for AI-assisted 
inventions is effective on February 13, 2024. This guidance applies to 
all applications, and to all patents resulting from applications, filed 
before, on, or after February 13, 2024.
    Comment Deadline Date: Written comments must be received on or 
before May 13, 2024.

ADDRESSES: Comments must be submitted through the Federal eRulemaking 
Portal at www.regulations.gov. To submit comments via the portal, enter 
docket number PTO-P-2023-0043 on the homepage and select ``Search.'' 
The site will provide a search results page listing all documents 
associated with this docket. Find a reference to this document and 
select on the ``Comment'' icon, complete the required fields, and enter 
or attach your comments. Attachments to electronic comments will be 
accepted in Adobe[supreg] portable document format (PDF) or Microsoft 
Word[supreg] format. Because comments will be made available for public 
inspection, information that the submitter does not desire to make 
public, such as an address or phone number, should not be included in 
the comments.
    Visit the Federal eRulemaking Portal for additional instructions on 
providing comments via the portal. If electronic submission of comments 
is not feasible due to a lack of access to a computer and/or the 
internet, please contact the USPTO using the contact information below 
for special instructions.

FOR FURTHER INFORMATION CONTACT: Matthew Sked, Senior Legal Advisor, at 
571-272-7627; or Nalini Mummalaneni, Senior Legal Advisor, at 571-270-
1647, both with the Office of Patent Legal Administration, Office of 
the Deputy Commissioner for Patents.

SUPPLEMENTARY INFORMATION:

I. Background

    In August 2019, the USPTO issued a request for public comments on 
patenting AI-assisted inventions.\1\ Among the various policy questions 
raised in the notice, the USPTO requested comments on several issues 
involving inventorship, such as the different ways a natural person can 
contribute to the conception of an AI-assisted invention. In October 
2020, the USPTO published a report titled ``Public Views on Artificial 
Intelligence and Intellectual Property Policy,'' which took a 
comprehensive look at the stakeholder feedback received in response to 
the questions posed in the August 2019 notice.\2\ In June 2022, the 
USPTO held its inaugural Artificial Intelligence/Emerging Technologies 
Partnership meeting, which included a panel discussion on 
``Inventorship and the Advent of Machine Generated Inventions.'' \3\ 
The USPTO later issued a ``Request for Comments Regarding Artificial 
Intelligence and Inventorship'' (RFC) on February 14, 2023.\4\ This RFC 
asked 11 questions, mostly regarding the issues involving AI and patent 
inventorship. On April 25 and May 8, 2023, the USPTO held public 
listening sessions at the USPTO headquarters and Stanford University, 
respectively. During these listening sessions, the USPTO heard from 32 
public speakers, and the events were attended by over 800 attendees, 
both in person and virtually. The USPTO has received 69 written 
comments from a diverse group of stakeholders. Comments received in 
response to the RFC can be viewed on the Regulations.gov docket 
page.\5\ As illustrated above, the USPTO has actively engaged with our 
stakeholders and has received extensive input from the public on 
inventorship for AI-assisted inventions. Notably, numerous commenters 
expressly agreed that the USPTO should provide guidance regarding 
inventorship and the patentability of AI-assisted inventions.
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    \1\ Request for Comments on Patenting Artificial Intelligence 
Inventions, 84 FR 44889 (August 27, 2019). AI-assisted inventions 
are inventions created by natural persons using one or more AI 
systems. The AI system's contribution is not inventorship, even if 
the AI system's contributions were instrumental in the creation of 
the invention. Thaler v. Vidal, 43 F.4th 1207 (Fed. Cir. 2022).
    \2\ The full report is available at www.uspto.gov/sites/default/files/documents/USPTO_AI-Report_2020-10-07.pdf.
    \3\ The recording is available at www.uspto.gov/about-us/events/aiet-partnership-series-1-kickoff-uspto-aiet-activities-and-patent-policy.
    \4\ 88 FR 9492 (February 14, 2023).
    \5\ Comments are viewable at www.regulations.gov/docket/PTO-P-2022-0045/comments.
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    Recognizing that ``[r]esponsible AI use has the potential to help 
solve urgent challenges while making our world more prosperous, 
productive, innovative, and secure,'' while ``[a]t the same time, 
irresponsible use could exacerbate societal harms such as fraud, 
discrimination, bias, and disinformation; displace and disempower 
workers; stifle competition; and pose risks to national security,'' 
President Biden issued the ``Executive Order on the Safe, Secure, and 
Trustworthy Development and Use of Artificial Intelligence'' on October 
30, 2023 (Executive Order). The Executive Order sets forth policy and 
principles, including that:

    Promoting responsible innovation, competition, and collaboration 
will allow the United States to lead in AI and unlock the 
technology's potential to solve some of society's most difficult 
challenges. This effort requires investments in AI-related 
education, training, development, research, and capacity, while 
simultaneously tackling novel intellectual property (IP) questions 
and other problems to protect inventors and creators. . . . The 
Federal Government will promote a fair, open, and competitive 
ecosystem and marketplace for AI and related technologies so that 
small developers and entrepreneurs can continue to drive innovation. 
Doing so requires stopping unlawful collusion and addressing risks 
from dominant firms' use of key assets such as semiconductors, 
computing power, cloud storage, and data to disadvantage 
competitors, and it requires supporting a marketplace that harnesses 
the benefits of AI to provide new opportunities for small 
businesses, workers, and entrepreneurs.

    Under section 5.2(c)(i) of the Executive Order (Promoting 
Innovation and Competition), the Executive Order provides that:

    (c) To promote innovation and clarify issues related to AI and 
inventorship of patentable subject matter, the Under Secretary of 
Commerce for Intellectual Property and Director of the United States 
Patent and Trademark Office (USPTO Director) shall:
    (i) within 120 days of the date of this order, publish guidance 
to USPTO 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.


[[Page 10045]]


    In accordance with the Executive Order, and to continue its mission 
to drive U.S. innovation, inclusive capitalism, and global 
competitiveness, the USPTO is providing guidance on the determination 
of inventorship for AI-assisted inventions to provide clarification and 
consistency when it comes to the evaluation of such issues. Section II 
of this notice provides an overview of the recent Federal Circuit 
decision in Thaler v. Vidal and its applicability to joint 
inventorship. Section III provides an assessment of the inventorship of 
AI-assisted inventions and its impact on patentability, and concludes 
such inventions are not categorically unpatentable due to improper 
inventorship if one or more natural persons significantly contributed 
to the invention. Section IV provides guidance and principles for 
determining the inventorship of an AI-assisted invention. Section V 
explains the impact the inventorship determination for AI-assisted 
inventions has on other aspects of patent practice.
    In conjunction with issuing this guidance, the USPTO is issuing 
examples to provide assistance to the public and examiners on the 
application of this guidance in specific situations. The examples are 
posted to public at www.uspto.gov/initiatives/artificial-intelligence/artificial-intelligence-resources. The USPTO is seeking public comments 
on the guidance as well as the examples. Based on the feedback received 
from its stakeholders and any relevant additional judicial decisions, 
the USPTO may issue further guidance, modify the current guidance, or 
issue additional examples. The USPTO views the inventorship guidance on 
AI-assisted inventions as an iterative process and may continue with 
periodic supplements as AI technology continues to advance and/or as 
judicial precedent evolves. The USPTO invites the public to submit 
suggestions on topics related to AI-assisted inventorship so it can 
address them in future guidance supplements.
    The USPTO recognizes that AI gives rise to other questions for the 
patent system besides inventorship, such as subject matter eligibility, 
obviousness, and enablement. In addition to addressing inventorship, 
section 5.2(c)(ii) of the Executive Order also provides that the USPTO 
Director shall,

    (ii) subsequently, within 270 days of the date of this order, 
issue additional guidance to USPTO patent examiners and applicants 
to address other considerations at the intersection of AI and IP, 
which could include, as the USPTO Director deems necessary, updated 
guidance on patent eligibility to address innovation in AI and 
critical and emerging technologies.

    The USPTO has been exploring issues at the intersection of AI and 
IP and is planning to continue to engage with our stakeholders as we 
move forward, issuing guidance as appropriate.

A. Impact on Examination Procedure and Prior Examination Guidance

    While this guidance is focused on AI-assisted inventions, portions 
of the guidance can apply to other types of inventions. To the extent 
that earlier guidance from the USPTO, including certain sections of the 
Manual of Patent Examining Procedure (9th Edition, rev. 07.2022, 
February 2023) (MPEP), is inconsistent with the guidance set forth in 
this notice, USPTO personnel are to follow these guidelines. The MPEP 
will be updated in due course.
    Disclaimer: This guidance does not constitute substantive 
rulemaking and does not have the force and effect of law. The guidance 
sets out agency policy with respect to the USPTO's interpretation of 
the inventorship requirements of the Patent Act in view of decisions by 
the Supreme Court of the United States (Supreme Court) and the United 
States Court of Appeals for the Federal Circuit (Federal Circuit). The 
guidance does not create any right or benefit, substantive or 
procedural, enforceable by any party against the USPTO. Rejections will 
continue to be based on the substantive law, and it is those rejections 
that are appealable to the PTAB and the courts.

II. Inventors and Joint Inventors Named on U.S. Patents and Patent 
Applications Must Be Natural Persons

    On April 22, 2020, the USPTO issued a pair of decisions denying 
petitions to name the Device for the Autonomous Bootstrapping of 
Unified Sentience (DABUS), an AI system, as an inventor on two patent 
applications. The USPTO's decisions explained that under current U.S. 
patent laws, inventorship is limited to a natural person(s).\6\ The 
USPTO's decisions were upheld on September 2, 2021, in a decision from 
the United States District Court for the Eastern District of 
Virginia.\7\ On appeal, the Federal Circuit affirmed in Thaler v. Vidal 
(Thaler) the holding ``that only a natural person can be an inventor, 
so AI cannot be.'' \8\ Specifically, the Federal Circuit stated that 35 
U.S.C. 100(f) defines an inventor as ``the individual or, if a joint 
invention, the individuals collectively who invented or discovered the 
subject matter of the invention.'' (emphasis in original) The court 
found that based on Supreme Court precedent, the word ``individual,'' 
when used in statutes, ordinarily means a human being unless Congress 
provided some indication that a different meaning was intended.\9\ The 
court further found that there is nothing in the Patent Act to indicate 
Congress intended a different meaning, and the Patent Act includes 
other language to support the conclusion that an ``individual'' in the 
Patent Act refers to a natural person.\10\ The court therefore 
concluded that an inventor must be a natural person.\11\ The court 
explained, however, that it was not confronted with ``the question of 
whether inventions made by human beings with the assistance of AI are 
eligible for patent protection.'' \12\ (emphasis in original)
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    \6\ The decision is available at www.uspto.gov/sites/default/files/documents/16524350_22apr2020.pdf.
    \7\ Thaler v. Hirshfeld, 558 F.Supp.3d 238 (E.D. Va. 2021).
    \8\ Thaler v. Vidal, 43 F.4th 1207, 1213 (Fed. Cir. 2022), cert 
denied, 143 S. Ct. 1783 (2023).
    \9\ Id. at 1211 (citing Mohamad v. Palestinian Auth., 566 U.S. 
449, 454 (2012)).
    \10\ Id.
    \11\ Id.
    \12\ Id. at 1213.
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    35 U.S.C. 100(g) defines the terms ``joint inventor'' and 
``coinventor'' as ``any 1 of the individuals who invented or discovered 
the subject matter of a joint invention.'' Based on the holding in 
Thaler that an ``individual'' must mean a natural person, it is clear 
that a ``joint inventor'' or ``coinventor'' must also be a natural 
person. In February of 2023, the USPTO published the R-07.2022 revision 
of the MPEP, which included revisions to section 2109. This section 
reiterates the USPTO's position, and the position expressed by the 
Federal Court in Thaler, that an inventor must be a natural person, and 
by extension, any joint inventor must be a natural person. As such, 
patent applications that name a machine on an application data sheet 
(37 CFR 1.76), an inventor's oath or declaration (37 CFR 1.63), or a 
substitute statement (37 CFR 1.64) as either an inventor or joint 
inventor will be considered by the USPTO to have improper inventorship.
    Further, the USPTO recognizes that while an AI system may not be 
named an inventor or joint inventor in a patent or patent application, 
an AI system--like other tools--may perform acts that, if performed by 
a human, could constitute inventorship under our laws. The Thaler 
decisions around ``inventorship'' are not a recognition of any limits 
on the current or future state of AI, but rather are an acknowledgment 
that the statutory language clearly limits

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inventorship on U.S. patents and patent applications to natural 
persons.

III. AI-Assisted Inventions Are Not Categorically Unpatentable for 
Improper Inventorship

    While AI systems and other non-natural persons \13\ cannot be 
listed as inventors on patent applications or patents, the use of an AI 
system by a natural person(s) does not preclude a natural person(s) 
from qualifying as an inventor (or joint inventors) if the natural 
person(s) significantly contributed to the claimed invention, as 
explained in section IV of this notice. Patent applications and patents 
for AI-assisted inventions must name the natural person(s) who 
significantly contributed to the invention as the inventor or joint 
inventors (i.e., meeting the Pannu \14\ factors as explained in section 
IV). Additionally, applications and patents must not list any entity 
that is not a natural person as an inventor or joint inventor, even if 
an AI system may have been instrumental in the creation of the claimed 
invention. This position is supported by the statutes, court decisions, 
and numerous policy considerations.
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    \13\ ``Non-natural person'' used in this notice refers to those 
entities that would not qualify as a natural person under the law 
(e.g., sovereigns, corporations, or machines).
    \14\ Pannu v. Iolab Corp., 155 F.3d 1344, 1351 (Fed. Cir. 1998).
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A. Statutory Framework

    The requirements that a patent application name an ``inventor'' and 
that each individual who is named an ``inventor'' of a claimed 
invention execute an oath or declaration are available in 35 U.S.C. 
115(a).\15\ These inventorship requirements are extended to joint 
inventorship in 35 U.S.C. 116(a).\16\ Under 35 U.S.C. 115(b), the oath 
or declaration must state, among other things, that ``such individual 
believes himself or herself to be the original inventor or an original 
joint inventor of a claimed invention in the application.'' Failure by 
the applicant to name the proper ``inventors'' is a ground for 
rejection under 35 U.S.C. 101 and 35 U.S.C. 115.\17\
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    \15\ ``An application for patent that is filed under section 
111(a) or commences the national stage under section 371 shall 
include, or be amended to include, the name of the inventor for any 
invention claimed in the application. Except as otherwise provided 
in this section, each individual who is the inventor or a joint 
inventor of a claimed invention in an application for patent shall 
execute an oath or declaration in connection with the application.''
    \16\ ``When an invention is made by two or more persons jointly, 
they shall apply for patent jointly and each make the required oath, 
except as otherwise provided in this title.''
    \17\ MPEP 2157 (``Note that a rejection under pre-AIA [America 
Invents Act] 35 U.S.C. 102(f) should not be made if the application 
is subject to examination under the first inventor to file (FITF) 
provisions of the AIA.'').
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    The term ``inventor'' is defined in 35 U.S.C. 100(f) as ``the 
individual or, if a joint invention, the individuals collectively who 
invented or discovered the subject matter of the invention'' (emphases 
added). Additionally, the term ``joint inventor'' is found in 35 U.S.C. 
100(g) and is defined as ``any 1 of the individuals who invented or 
discovered the subject matter of a joint invention'' (emphasis added). 
As stated in Thaler, the term ``individual'' ordinarily means a human 
being, and Congress did not provide any indication it intended a 
different meaning.\18\ The terms ``inventor'' and ``joint inventor'' 
have a specific meaning in the Patent Act: those natural persons who 
invent or discover the claimed invention. Therefore, the statutory 
requirement in 35 U.S.C. 115 and 116 to name the inventor or joint 
inventors and require each to sign an oath or declaration is limited 
only to the natural persons who invented or discovered the claimed 
invention. These statutes do not provide for recognizing contributions 
by tools such as AI systems (or other advanced systems) for 
inventorship purposes, even if those AI systems were instrumental in 
the creation of the invention.
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    \18\ Thaler v. Vidal, 43 F.4th at 1211.
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    Additionally, there are no other sections of the Patent Act that 
support a position that inventions that are created by natural 
person(s) using specific tools, including AI systems, result in 
improper inventorship or are otherwise unpatentable. The statutes only 
require the naming of the natural persons who invented or discovered 
the claimed invention, irrespective of the contributions provided by an 
AI system or any other advanced system. Accordingly, the inability to 
list an AI system, used to create an invention, as a joint inventor 
does not render the invention unpatentable due to improper 
inventorship.

B. Judicial Interpretation and Policy Considerations

    The Supreme Court has indicated that the meaning of ``invention'' 
in the Patent Act refers to the inventor's conception.\19\ Similarly, 
the Federal Circuit has made clear that conception is the touchstone of 
inventorship.\20\ Conception is often referred to as a mental act or 
the mental part of invention.\21\ Specifically, ``[i]t is `the 
formation in the mind of the inventor, of a definite and permanent idea 
of the complete and operative invention, as it is hereafter to be 
applied in practice.' '' \22\ Because conception is an act performed in 
the mind, it has to date been understood as only performed by natural 
persons. The courts have been unwilling to extend conception to non-
natural persons.\23\ Hence, when a natural person invents using an AI 
system, the conception analysis should focus on the natural person(s).
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    \19\ Pfaff v. Wells Elecs., Inc., 525 U.S. 55, 60 (1998) (``The 
primary meaning of the word `invention' in the Patent Act 
unquestionably refers to the inventor's conception rather than to a 
physical embodiment of that idea.'').
    \20\ Sewall v. Walters, 21 F.3d 411, 415 (Fed. Cir. 1994) 
(``Determining `inventorship' is nothing more than determining who 
conceived the subject matter at issue, whether that subject matter 
is recited in a claim in an application or in a count in an 
interference.''); see also Ethicon, Inc. v. U.S. Surgical Corp., 135 
F.3d 1456, 1460 (Fed. Cir. 1998) (``Because `[c]onception is the 
touchstone of inventorship,' each joint inventor must generally 
contribute to the conception of the invention.'') (quoting Burroughs 
Wellcome Co. v. Barr Labs., Inc., 40 F.3d 1223, 1227-28 (Fed. Cir. 
1994)).
    \21\ Univ. of Utah v. Max-Planck-Gesellschaft Zur Forderung Der 
Wissenschaften E.V., 734 F.3d 1315, 1323 (Fed. Cir. 2013); Fina Oil 
& Chem. Co. v. Ewen, 123 F.3d 1466, 1474 (Fed. Cir. 1997).
    \22\ Burroughs Wellcome, 40 F.3d at 1228 (citing Hybritech Inc. 
v. Monoclonal Antibodies, Inc., 802 F.2d 1367, 1376 (Fed. Cir. 1986) 
(quoting 1 Robinson on Patents 532 (1890)).
    \23\ See Univ. of Utah, 734 F.3d at 1323 (``To perform this 
mental act, inventors must be natural persons and cannot be 
corporations or sovereigns.''); Beech Aircraft Corp. v. EDO Corp., 
990 F.2d 1237, 1248 (Fed. Cir. 1993) (``EDO could never have been 
declared an `inventor,' as EDO was merely a corporate assignee and 
only natural persons can be `inventors.').
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    The patent system is designed to encourage human ingenuity.\24\ 
From its very inception, patents were intended to incentivize human 
individuals to invent and thereby promote the progress of science and 
the useful arts.\25\ Focusing

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the patentability of AI-assisted inventions on the human contributions 
supports this policy objective by incentivizing human-centered 
activities and contributions, and by providing patent protections to 
inventions with significant human contributions while prohibiting 
patents on those that are not invented by natural persons. This 
approach supports the USPTO's goal of helping to ensure our patent 
system strikes the right balance between protecting and incentivizing 
AI-assisted inventions and not hindering future human innovation by 
locking up innovation created without human ingenuity.
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    \24\ See, e.g., U.S. Const. art. 1, s. 8, cl. 8 (``The Congress 
shall have Power . . . To promote the Progress of Science and useful 
Arts, by securing for limited Times to Authors and Inventors the 
exclusive Right to their respective Writings and Discoveries.''); 
Committee Reports on the 1952 Patent Act, S. Rep. No. 1979, 82d 
Cong., 2d Sess., 5 (1952); H. R. Rep. No. 1923, 82d Cong., 2d Sess., 
6 (1952) (Inventions eligible for patenting ``include anything under 
the sun made by man.'') (emphasis added)); Graham v. John Deere Co., 
383 U.S. 1, 9 (1966) (``The patent monopoly was not designed to 
secure to the inventor [their] natural right in [their] discoveries. 
Rather, it was a reward, an inducement, to bring forth new 
knowledge. The grant of an exclusive right to an invention was the 
creation of society--at odds with the inherent free nature of 
disclosed ideas--and was not to be freely given. Only inventions and 
discoveries which furthered human knowledge, and were new and 
useful, justified the special inducement of a limited private 
monopoly.''); Diamond v. Chakrabarty, 447 U.S. 303, 309-310 (1980) 
(Under the Patent Act, a claim is considered patentable subject 
matter if it is to ``a nonnaturally occurring manufacture or 
composition of matter--a product of human ingenuity having a 
distinctive name, character and use.'') (emphasis added).
    \25\ See, e.g., Thaler v. Perlmutter, 2023 WL 5333236 at *4 
(D.D.C. 2023) (``At the founding, both copyright and patent were 
conceived of as forms of property that the government was 
established to protect, and it was understood that recognizing 
exclusive rights in that property would further the public good by 
incentivizing individuals to create and invent. The act of human 
creation--and how to best encourage human individuals to engage in 
that creation, and thereby promote science and the useful arts--was 
thus central to American copyright from its very inception. Non-
human actors need no incentivization with the promise of exclusive 
rights under United States law, and copyright was therefore not 
designed to reach them.'').
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IV. Naming Inventors for AI-Assisted Inventions

    The patent statutes require the naming of all inventors who 
contributed to at least one claim of a patent.\26\ The threshold 
question in determining the named inventor(s) is who contributed to the 
conception of the invention.\27\ In situations where a single person 
did not conceive the entire invention (e.g., joint inventorship), 
courts have found that a person who shares in the conception of the 
invention is an inventor.\28\ In these situations, each named inventor 
in a patent application or patent, including an application or a patent 
for an AI-assisted invention, must have made a ``significant 
contribution'' \29\ to the claimed invention.\30\
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    \26\ Vapor Point LLC v. Moorhead, 832 F.3d 1343, 1348-49 (Fed. 
Cir. 2016).
    \27\ MPEP 2109 (subsection II).
    \28\ MPEP 2109.01.
    \29\ Fina Oil, 123 F.3d at 1473 (``[A] joint inventor must 
contribute in some significant manner to the conception of the 
invention.'').
    \30\ The USPTO recognizes there are divergent views on the level 
of contribution AI systems can make in the invention creation 
process. See, e.g., Response to the RFC from American Intellectual 
Property Law Association at 3 (``[E]ven if AI were considered or 
categorized as equivalent to a human, its contributions would not 
rise to the level of joint inventorship, as the core inventive 
concepts and decisions remain within the purview of the human 
inventors.''); Response to the RFC from International Federation of 
Intellectual Property Attorneys (FICPI) at 3 (``FICPI takes the 
position that AI is becoming powerful and creative enough to 
generate patentable contributions to inventions to which a human has 
arguably not made an inventive contribution but instead has directed 
the AI to endeavor towards the solution to a problem.''). Comments 
are viewable at www.regulations.gov/docket/PTO-P-2022-0045/comments.
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A. Significant Contribution

    When evaluating the contributions made by natural persons in the 
invention creation process, it is important to keep in mind they may 
apply for a patent jointly, ``even though (1) they did not physically 
work together or at the same time, (2) each did not make the same type 
or amount of contribution, or (3) each did not make a contribution to 
the subject matter of every claim of the patent.'' \31\ Instead, each 
inventor must contribute in some significant manner to the invention. 
In making this determination, the courts have looked to several 
factors, such that each inventor must: ``(1) contribute in some 
significant manner to the conception or reduction to practice of the 
invention,\32\ (2) make a contribution to the claimed invention that is 
not insignificant in quality, when that contribution is measured 
against the dimension of the full invention, and (3) do more than 
merely explain to the real inventors well-known concepts and/or the 
current state of the art'' (Pannu factors).\33\ Courts have found that 
a failure to meet any one of these factors precludes that person from 
being named an inventor.\34\
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    \31\ 35 U.S.C. 116(a).
    \32\ While these factors do refer to reduction to practice, 
applicants are reminded that the main inquiry is who conceived of 
the invention. Reduction to practice, per se, is generally 
irrelevant to this inquiry. MPEP 2109(II) (citing Fiers v. Revel, 
984 F.2d 1164, 1168 (Fed. Cir. 1993)). The mention of reduction to 
practice in the Pannu factors is an acknowledgement of the 
simultaneous conception and reduction to practice doctrine used in 
unpredictable technologies. See, e.g., Amgen, Inc. v. Chugai Pharm. 
Co., 927 F.2d 1200, 1206 (Fed. Cir. 1991). The Pannu factors are not 
a basis to conclude that reduction to practice, alone, is sufficient 
to demonstrate inventorship.
    \33\ Pannu, 155 F.3d at 1351.
    \34\ HIP, Inc. v. Hormel Foods Corp., 66 F.4th 1346, 1353 (Fed. 
Cir. 2023) (citing Pannu, 155 F.3d at 1351 (``a joint inventor must 
contribute in a significant manner to the conception or reduction to 
practice of the invention, make a contribution to the invention that 
is not insignificant, and do more than explain well-known concepts 
or the current state of the art'')) (emphasis in original).
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    As for the first Pannu factor, ``[a] person who shares in 
conception of a claimed invention is a joint inventor of the 
invention.'' \35\ In other words, each named inventor must have 
significantly contributed to the ``definite and permanent idea of the 
complete and operative invention as it is thereafter applied in 
practice.'' \36\
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    \35\ MPEP 2138.04(I) (citing In re VerHoef, 888 F.3d 1362, 1366-
67, 126 F.2d 1561, 1564-65 (Fed. Cir. 2018).
    \36\ Townsend v. Smith, 36 F.2d 292, 295 (CCPA 1929).
---------------------------------------------------------------------------

    In addition to inventorship disputes, the courts have extensively 
addressed the issue of conception in connection with interference 
proceedings under pre-America Invents Act 35 U.S.C. 102(g), and the 
USPTO views that body of caselaw as instructive. In particular, 
interference proceedings involve determining the date of conception for 
competing inventions. That inquiry, in turn, requires determining what 
activities are sufficient for conception and by whom.\37\ In these 
decisions, the courts have recognized there must be a contemporaneous 
recognition and appreciation of the invention for there to be 
conception.\38\ Put simply, conception does not occur when there is 
only an ``unrecognized accidental creation.'' \39\ While recognition 
and appreciation are generally required for complete conception, there 
is no requirement that each inventor recognize and appreciate the 
invention. Therefore, each inventor must make a significant 
contribution to the conception of the invention, and at least one 
inventor must have recognition and appreciation.\40\
---------------------------------------------------------------------------

    \37\ 35 U.S.C. 102(g)(1) (``In determining priority of invention 
under this subsection, there shall be considered not only the 
respective dates of conception and reduction to practice of the 
invention, but also the reasonable diligence of one who was first to 
conceive and last to reduce to practice, from a time prior to 
conception by the other.'').
    \38\ Silvestri v. Grant, 496 F.2d 593, 597 (CCPA 1974); Heard v. 
Burton, 333 F.2d 239, 244 (CCPA 1964) (``In the present case it is 
the recognition and appreciation of the invention which was lacking 
to Dr. Heard prior to April 23, 1952 [appellees' filing date].'').
    \39\ Invitrogen Corp. v. Clontech Labs., Inc., 429 F.3d 1052, 
1063 (Fed. Cir. 2005).
    \40\ Amgen, Inc. v. Chugai Pharm. Co., 927 F.2d 1200, 1206 (Fed. 
Cir. 1991) (``Conception requires both the idea of the invention's 
structure and possession of an operative method of making it.'') 
(citing Oka v. Youssefyeh, 849 F.2d 581, 583 (Fed. Cir. 1988)).
---------------------------------------------------------------------------

    The fact that a human performs a significant contribution to 
reduction to practice of an invention conceived by another is not 
enough to constitute inventorship. It is settled law that such 
contributions are insufficient to demonstrate inventorship.\41\ 
Although the first Pannu factor refers to ``the conception or reduction 
to practice of the invention,'' the court did so by citing an earlier 
Federal Circuit decision concerning ``the doctrine of simultaneous 
conception and reduction to practice.'' \42\ Pursuant to that doctrine, 
``in some instances, an inventor may only be able to establish a 
conception by pointing to a reduction to practice through a successful 
experiment.'' \43\ This concept of

[[Page 10048]]

simultaneous conception and reduction to practice is sometimes 
pertinent in unpredictable arts, where, for example, the inventor does 
not have a reasonable expectation that they would produce the claimed 
invention.\44\ Under those circumstances, the conception of a specific 
chemical compound does not occur until the reduction to practice 
occurs.\45\ Therefore, the reference to reduction to practice in the 
first Pannu factor is simply an acknowledgement of this doctrine, and 
it does not imply that reduction to practice is sufficient for 
invention or is a substitute for conception.
---------------------------------------------------------------------------

    \41\ MPEP 2109(II) (citing Fiers v. Revel, 984 F.2d 1164, 1168 
(Fed. Cir. 1993)).
    \42\ See Pannu, 155 F.3d at 1351 (citing Fina Oil).
    \43\ Fina Oil, 123 F.3d at 1473; see also, e.g., Amgen, 927 F.2d 
at 1206.
    \44\ Hitzeman v. Rutter, 243 F.3d 1345, 1357-58 (Fed Cir. 2001) 
(Inventor's ``hope'' that a genetically altered yeast would produce 
antigen particles having the particle size and sedimentation rates 
recited in the claims did not establish conception, since the 
inventor did not show a ``definite and permanent understanding'' as 
to whether or how, or a reasonable expectation that, the yeast would 
produce the recited antigen particles.).
    \45\ Id.
---------------------------------------------------------------------------

    In the context of AI-assisted inventions, natural person(s) who 
create an invention using an AI system, or any other advanced system, 
must contribute significantly to the invention, as specified by the 
Pannu factors.\46\ Although the Pannu factors are generally applied to 
two or more people who create an invention (i.e., joint inventors), 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.
---------------------------------------------------------------------------

    \46\ Pannu, 155 F.3d at 1351.
---------------------------------------------------------------------------

    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.\47\ However, each claim must have been invented by at least 
one named inventor.\48\ 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. Inventorship is 
improper in any patent or patent application that includes a claim in 
which at least one natural person did not significantly contribute to 
the claimed invention, even if the application or patent includes other 
claims invented by at least one natural person. Therefore, a rejection 
under 35 U.S.C. 101 and 115 should be made for each claim for which an 
examiner or other USPTO employee determines from the file record or 
extrinsic evidence that at least one natural person, i.e., one or more 
named inventors, did not significantly contribute.
---------------------------------------------------------------------------

    \47\ MPEP 2109.01.
    \48\ 35 U.S.C. 115(a) (``An application for patent that is filed 
under section 111(a) or commences the national stage under section 
371 shall include, or be amended to include, the name of the 
inventor for any invention claimed in the application.'') (emphasis 
added).
---------------------------------------------------------------------------

    When applying the Pannu factors to determine whether natural 
persons significantly contributed to an AI-assisted invention, one must 
remember this determination is made on a claim-by-claim and case-by-
case basis, and each instance turns on its own facts.\49\ Generally, 
the USPTO presumes those inventors named on the application data sheet 
or oath/declaration are the actual inventor or joint inventors of the 
application.\50\ However, examiners and other USPTO personnel should 
carefully evaluate the facts from the file record or other extrinsic 
evidence when making determinations on inventorship. When the facts or 
evidence indicates that the named inventor or joint inventors did not 
contribute significantly to the claimed invention, i.e., their 
contributions do not satisfy the Pannu factors for a particular claim, 
a rejection under 35 U.S.C. 101 and 115 is appropriate.\51\ While 
inventorship may be correctable in certain situations under 37 CFR 1.48 
or 1.324,\52\ a new inventor cannot be named if no natural person made 
a significant contribution to an AI-assisted invention. Additionally, a 
rejection under 35 U.S.C. 101 and 115, or other appropriate action, 
should be made for all claims in any application that lists an AI 
system or other non-natural person as an inventor or joint inventor.
---------------------------------------------------------------------------

    \49\ Fina Oil, 123 F.3d at 1473 (``The determination of whether 
a person is a joint inventor is fact specific, and no bright-line 
standard will suffice in every case.''); see also In re Jolley, 308 
F.3d 1317, 1323 (Fed. Cir. 2002) (``[T]he conception inquiry is 
fact-intensive . . . '').
    \50\ See MPEP 2157; see also MPEP 602.01 (``The inventorship of 
a nonprovisional application under 35 U.S.C. 111(a) is the inventor 
or joint inventors set forth in the application data sheet in 
accordance with [37 CFR] Sec.  1.76 filed before or concurrently 
with the inventor's oath or declaration.'').
    \51\ MPEP 2157.
    \52\ See section V(C) below.
---------------------------------------------------------------------------

    Given the increasing use of AI systems in the invention creation 
process, applicants should take extra care in ensuring each named 
inventor in a patent application or patent provided a significant 
contribution to a claimed invention as described by the Pannu factors.

B. Guiding Principles

    Determining whether a natural person's contribution in AI-assisted 
inventions is significant may be difficult to ascertain, and there is 
no bright-line test. To assist applicants and USPTO personnel in 
determining proper inventorship, the USPTO provides the following non-
exhaustive list of principles that can help inform the application of 
the Pannu factors in AI-assisted inventions:
    1. A natural person's use of an AI system in creating an AI-
assisted invention does not negate the person's contributions as an 
inventor.\53\ The natural person can be listed as the inventor or joint 
inventor if the natural person contributes significantly to the AI-
assisted invention.
---------------------------------------------------------------------------

    \53\ Cf. Shatterproof Glass Corp. v. Libbey-Owens Ford Co., 758 
F.2d 613, 624 (Fed. Cir. 1985) (``An inventor `may use the services, 
ideas, and aid of others in the process of perfecting [their] 
invention without losing [their] right to a patent.''') (quoting 
Hobbs v. U.S. Atomic Energy Comm., 451 F.2d 849, 864 (5th Cir. 
1971)).
---------------------------------------------------------------------------

    2. Merely recognizing a problem or having a general goal or 
research plan to pursue does not rise to the level of conception.\54\ A 
natural person who only presents a problem to an AI system may not be a 
proper inventor or joint inventor of an invention identified from the 
output of the AI system. However, a significant contribution could be 
shown by the way the person constructs the prompt in view of a specific 
problem to elicit a particular solution from the AI system.
---------------------------------------------------------------------------

    \54\ Burroughs Wellcome, 40 F.3d at 1228 (``An idea is definite 
and permanent when the inventor has a specific, settled idea, a 
particular solution to the problem at hand, not just a general goal 
or research plan [the inventor] hopes to pursue.''); see also 
Hitzeman, 243 F.3d 1345, 1357-58; In re Verhoef, 888 F.3d 1362, 1366 
(Fed. Cir. 2018) (Verhoef's recognition of the problem of connecting 
the cord of the harness to the dog's toes did not make Verhoef the 
sole inventor; Lamb's proposed solution to that problem was a 
significant contribution).
---------------------------------------------------------------------------

    3. Reducing an invention to practice alone is not a significant 
contribution that rises to the level of inventorship.\55\ Therefore, a 
natural person who merely recognizes and appreciates the output of an 
AI system as an invention, particularly when the properties and utility 
of the output are apparent to those of ordinary skill, is not 
necessarily an inventor.\56\ However, a person who takes the output of 
an AI system and makes a significant contribution to the output to 
create an invention may be a proper inventor. Alternatively, in certain 
situations, a person who conducts a successful experiment using the AI 
system's output could

[[Page 10049]]

demonstrate that the person provided a significant contribution to the 
invention even if that person is unable to establish conception until 
the invention has been reduced to practice.\57\
---------------------------------------------------------------------------

    \55\ MPEP 2109 (subsection III).
    \56\ See e.g., Solvay S.A. v. Honeywell Intern. Inc., 622 F.3d 
1367, 1378-79 (Fed. Cir. 2010) (finding that deriving the invention 
of another and appreciating what was made did not rise to the level 
of conception).
    \57\ See MPEP 2138.04 (subsection II); see also Dana-Farber 
Cancer Inst., Inc. v. Ono Pharm. Co., 964 F.3d 1365, 1373-74 (Fed. 
Cir. 2020) (Dr. Freeman's identification of the 292 sequences in the 
BLAST database (an automated search tool for finding similarity 
between biological sequences) and subsequent immunohistochemistry 
experiments to identify several types of tumors that express PD-L1 
were found sufficient to make him a joint inventor.).
---------------------------------------------------------------------------

    4. A natural person who develops an essential building block from 
which the claimed invention is derived may be considered to have 
provided a significant contribution to the conception of the claimed 
invention even though the person was not present for or a participant 
in each activity that led to the conception of the claimed 
invention.\58\ In some situations, the natural person(s) who designs, 
builds, or trains an AI system in view of a specific problem to elicit 
a particular solution could be an inventor, where the designing, 
building, or training of the AI system is a significant contribution to 
the invention created with the AI system.
---------------------------------------------------------------------------

    \58\ Dana-Farber, 964 F.3d at 1372-74 (Drs. Freeman and Wood 
were found to be joint inventors even though they did not conceive 
of the claimed invention of using anti-PD-1 antibodies to treat 
tumors but instead discovered the expression of PD-L1 in human 
tumors and that PD-1/PD-LI interaction inhibits the immune 
response.).
---------------------------------------------------------------------------

    5. Maintaining ``intellectual domination'' over an AI system does 
not, on its own, make a person an inventor of any inventions created 
through the use of the AI system.\59\ Therefore, a person simply owning 
or overseeing an AI system that is used in the creation of an 
invention, without providing a significant contribution to the 
conception of the invention, does not make that person an inventor.
---------------------------------------------------------------------------

    \59\ Verhoef, 888 F.3d at 1367 (court refused to endorse the 
``intellectual domination'' language and emphasized that the person 
who conceives of the invention is the inventor).
---------------------------------------------------------------------------

V. Patent Practice

A. Applicability of This Guidance to Design and Plant Patent 
Applications and Patents

    35 U.S.C. 171 provides that a patent for a design may be obtained 
by ``[w]hoever invents any new, original, and ornamental design for an 
article of manufacture'' and that the provisions related to utility 
patents are applicable to design patents, except as otherwise provided 
(e.g., in 35 U.S.C. 172-173).\60\ The Federal Circuit has interpreted 
35 U.S.C. 171 such that the inventorship inquiry is the same for a 
design patent and a utility patent.\61\
---------------------------------------------------------------------------

    \60\ See 35 U.S.C. 171.
    \61\ Hoop v. Hoop, 279 F.3d 1004, 1007 (Fed. Cir. 2002) (``We 
apply the same standard of inventorship to design patents that we 
require for utility patents.'') (citing In re Rousso, 222 F.2d 729, 
731 (CCPA 1955)).
---------------------------------------------------------------------------

    35 U.S.C. 161 provides that a plant patent may be obtained by 
``[w]hoever invents or discovers and asexually reproduces'' a distinct 
and new variety of plant.\62\ 35 U.S.C. 161 limits patent protection to 
plants ``that were created as a result of plant breeding or other 
agricultural and horticultural efforts and that were created by the 
inventor'' (emphasis in original).\63\ That is, to be entitled to 
patent protection, the inventor of a plant must have contributed to the 
creation of the plant in addition to having appreciated its uniqueness 
and asexually reproduced it.\64\ This is true for new and distinct 
plant varieties invented with the assistance of AI. The use of an AI 
system by a natural person(s) does not preclude the natural person(s) 
from qualifying as an inventor (or joint inventors) of the claimed 
plant as long as the plant was created with significant contribution(s) 
from the natural person(s).
---------------------------------------------------------------------------

    \62\ See 35 U.S.C. 161.
    \63\ In re Beineke, 690 F.3d 1344, 1352 (Fed. Cir. 2012).
    \64\ Id. at 1348.
---------------------------------------------------------------------------

    Therefore, this guidance regarding AI-assisted inventions applies 
not only to utility patents and patent applications but also to design 
and plant patents and patent applications.

B. Duties Owed to the USPTO

(i) Duty of Disclosure
    ``Each individual associated with the filing and prosecution of a 
patent application'' and ``[e]ach individual associated with the patent 
owner in a reexamination proceeding'' has a duty of candor and good 
faith in dealing with the USPTO.\65\ Included within the duty of candor 
and good faith is the duty to disclose all known information that is 
material to patentability.\66\ This duty extends to parties and 
individuals associated with proceedings before the PTAB and the Office 
of the Commissioner for Patents.\67\ 37 CFR 1.56(b) states that 
``[I]nformation is material to patentability when it is not cumulative 
to information already of record or being made of record in the 
application, and (1) [i]t establishes, by itself or in combination with 
other information, a prima facie case of unpatentability of a claim; or 
(2) [i]t refutes, or is inconsistent with, a position the applicant 
takes in: (i) [o]pposing an argument of unpatentability relied on by 
the Office, or (ii) [a]sserting an argument of patentability.''
---------------------------------------------------------------------------

    \65\ See 37 CFR 1.56, 1.555. For patent applications, including 
reissue applications, these individuals include each inventor named 
in the application, each attorney or agent who prepares or 
prosecutes the application, and ``[e]very other person who is 
substantively involved in the preparation or prosecution of the 
application and who is associated with the inventor, the applicant, 
an assignee, or anyone to whom there is an obligation to assign the 
application.'' 37 CFR 1.56(c); see 37 CFR 1.171. For reexamination 
proceedings, these individuals include ``the patent owner, each 
attorney or agent who represents the patent owner, and every other 
individual who is substantively involved on behalf of the patent 
owner in a reexamination proceeding.'' 37 CFR 1.555(a).
    \66\ 37 CFR 1.56(a), 1.555(a).
    \67\ See 37 CFR 42.11; see also Lectrosonics, Inc. v. Zaxcom, 
Inc., IPR2018-01129, 01130, Paper 15 at 9-10 (PTAB Feb. 25, 2019) 
(precedential) (``Under 37 CFR 42.11, all parties have a duty of 
candor, which includes a patent owner's duty to disclose to the 
Board information of which the patent owner is aware that is 
material to the patentability of substitute claims, if such 
information is not already of record in the case.'').
---------------------------------------------------------------------------

    The USPTO is not changing or modifying its duty of disclosure. 
However, applicants and patent owners are reminded of their existing 
duty of disclosure and its applicability to the inventorship 
determination. Because improper inventorship is a ground of rejection 
under 35 U.S.C. 101 and 115,\68\ parties identified in 37 CFR 1.56(c), 
1.555(a), and 42.11(a) have a duty to disclose to the USPTO information 
that raises a prima facie case of unpatentability due to improper 
inventorship or that refutes, or is inconsistent with, a position an 
applicant takes in opposing an inventorship rejection or asserting 
inventorship. For example, in applications for AI-assisted inventions, 
this information could include evidence that demonstrates a named 
inventor did not significantly contribute to the invention because the 
person's purported contribution(s) was made by an AI system.
---------------------------------------------------------------------------

    \68\ MPEP 2157.
---------------------------------------------------------------------------

    At this time, to meet their duty of disclosure, applicants rarely 
need to submit information regarding inventorship. The USPTO does not 
believe this inventorship guidance will have a major impact on 
applicants' disclosure requirements. However, special care should be 
taken by those individuals subject to this duty to ensure all material 
information is submitted to the USPTO to avoid any potential negative 
consequences.\69\
---------------------------------------------------------------------------

    \69\ See MPEP 2016.
---------------------------------------------------------------------------

(ii) Duty of Reasonable Inquiry
    37 CFR 1.4(d)(4)(i) states that ``[t]he presentation to the Office 
(whether by

[[Page 10050]]

signing, filing, submitting, or later advocating) of any paper by a 
party, whether a practitioner or nonpractitioner, constitutes a 
certification under Sec.  11.18(b).'' Section 11.18(b) includes Sec.  
11.18(b)(2), which calls for an ``inquiry reasonable under the 
circumstances'' to ensure that the paper is not being presented for any 
improper purpose, the legal contentions are warranted by law, the 
allegations and other factual contentions have evidentiary support, and 
the denials of factual contentions are warranted on the evidence.\70\ 
The duty of reasonable inquiry pursuant to 37 CFR 11.18(b)(2) is 
identical to that in Fed. R. Civ. P. 11(b).\71\ Accordingly, each party 
presenting a paper to the USPTO, whether a practitioner or non-
practitioner, has a duty to perform an inquiry that is reasonable under 
the circumstances. A duty of reasonable inquiry may exist based on 
circumstances known to the party presenting the paper to the USPTO. 
Failing to inquire when the circumstances warrant such an inquiry may 
jeopardize the validity of the application or document, or the validity 
or enforceability of any patent or certificate resulting therefrom, and 
could result in sanctions or other actions under 37 CFR 11.18(c).\72\
---------------------------------------------------------------------------

    \70\ See 37 CFR 11.18(b)(2): ``To the best of the party's 
knowledge, information and belief, formed after an inquiry 
reasonable under the circumstances, (i) The paper is not being 
presented for any improper purpose, such as to harass someone or to 
cause unnecessary delay or needless increase in the cost of any 
proceeding before the Office; (ii) The other legal contentions 
therein are warranted by existing law or by a nonfrivolous argument 
for the extension, modification, or reversal of existing law or the 
establishment of new law; (iii) The allegations and other factual 
contentions have evidentiary support or, if specifically so 
identified, are likely to have evidentiary support after a 
reasonable opportunity for further investigation or discovery; and 
(iv) The denials of factual contentions are warranted on the 
evidence, or if specifically so identified, are reasonably based on 
a lack of information or belief.''
    \71\ Compare 37 CFR 11.18(b)(2) with Fed. R. Civ. P. 11(b) 
(2007). See also MPEP 410.
    \72\ MPEP 410.
---------------------------------------------------------------------------

    The USPTO is not changing or modifying its duty of reasonable 
inquiry. The USPTO has previously provided examples of possible 
procedures that could help avoid problems with the duty of 
disclosure.\73\ These examples should be carefully considered because 
they may be helpful in ascertaining what a reasonable inquiry may 
require. For example, patent practitioners who are preparing and 
prosecuting an application should inquire about the proper 
inventorship.\74\ Given the ubiquitous nature of AI, this inventorship 
inquiry could include questions about whether and how AI is being used 
in the invention creation process. In making inventorship 
determinations, it is appropriate to assess whether the contributions 
made by natural persons rise to the level of inventorship as discussed 
in section IV above.
---------------------------------------------------------------------------

    \73\ See MPEP 2004.
    \74\ Id. (``2. It is desirable to ask questions about 
inventorship. Who is the proper inventor? Are there disputes or 
possible disputes about inventorship? If there are questions, call 
them to the attention of the U.S. Patent and Trademark Office.'').
---------------------------------------------------------------------------

C. Naming the Inventors

    35 U.S.C. 115 requires that an application filed under 35 U.S.C. 
111(a) shall include the name of the inventor or each joint 
inventor.\75\ As provided in 37 CFR 1.41(b), an applicant may name the 
inventorship for a non-provisional application under 35 U.S.C. 111(a) 
in the application data sheet in accordance with 37 CFR 1.76, or in the 
inventor's oath or declaration in accordance with 37 CFR 1.63.\76\ Once 
the inventorship has been established in an application, a correction 
of inventorship must be made pursuant to 37 CFR 1.48(a). After the 
patent has issued, a correction of inventorship must be made according 
to 37 CFR 1.324 or by reissue.\77\
---------------------------------------------------------------------------

    \75\ See MPEP 2109.
    \76\ See MPEP 602.01 for more information on naming the inventor 
or joint inventor in an application.
    \77\ See MPEP 1481.02 and 1402 (subsection II).
---------------------------------------------------------------------------

    In situations in which it is determined that contributions by a 
named inventor to the claimed subject matter do not rise to the level 
of inventorship, inventorship should be corrected in accordance with 37 
CFR 1.48 or 1.324. Although 37 CFR 1.48 does not contain a diligence 
requirement for filing the request, once an inventorship error is 
discovered, timeliness requirements under 37 CFR 1.116 and 1.312 
apply.\78\ Correction of inventorship may also be obtained without the 
need for filing a request under 37 CFR 1.48 by the filing of a 
continuing application under 37 CFR 1.53 and subsequently abandoning 
the parent application.\79\
---------------------------------------------------------------------------

    \78\ See MPEP 602.01(c).
    \79\ See id. for more information on correction of inventorship.
---------------------------------------------------------------------------

    In situations in which inventorship with respect to a particular 
claim cannot be corrected (i.e., no natural person significantly 
contributed to the claimed invention), the claim must be canceled or 
amended. Parties under Sec. Sec.  1.56(c) and 1.555(a) who become aware 
of material information on inventorship should submit the information 
as early as possible in prosecution and not wait until after 
allowance.\80\ Applicants should continue to ensure that the proper 
inventors are listed as prosecution progresses (e.g., due to amendments 
to claims).\81\
---------------------------------------------------------------------------

    \80\ See MPEP 2003.
    \81\ See, e.g., MPEP 602.09.
---------------------------------------------------------------------------

D. Requirements for Information

    Patent examiners and other USPTO employees have the ability to 
require the submission of information that may be reasonably necessary 
to properly examine or treat a matter in a pending or abandoned 
application, in a patent, or in a reexamination proceeding.\82\ The 
information that must be submitted to comply with a requirement for 
information under 37 CFR 1.105 may not necessarily be material to 
patentability in itself under 37 CFR 1.56, but is reasonably necessary 
to obtain a complete record from which a determination of patentability 
can be made.\83\ In other words, the threshold for requiring 
information under 37 CFR 1.105 is substantially lower than the 
threshold for disclosing information under 37 CFR 1.56. Therefore, when 
an examiner or other USPTO employee has a reasonable basis to conclude 
that an individual identified under 37 CFR 1.56(c) or 37 CFR 1.555(a) 
or any assignee has information reasonably necessary to the examination 
of the application or treatment of some matter, the examiner or other 
USPTO employee may require the submission of information that is not 
necessarily material to patentability.\84\ This would apply in the 
context of applications or patents for AI-assisted inventions such that 
if an examiner or other USPTO employee has a reasonable basis to 
conclude that one or more named inventors may not have contributed 
significantly to the claimed subject matter, the examiner or other 
USPTO employee may request information from the applicant regarding 
inventorship even if the information is not material to 
patentability.\85\
---------------------------------------------------------------------------

    \82\ 37 CFR 1.105(a)(l).
    \83\ See MPEP 704.12(a).
    \84\ MPEP 704.10.
    \85\ See id. (Examiners can request information under 37 CFR 
1.105 in accordance with the policies and practices set forth by 
their respective Technology Centers).
---------------------------------------------------------------------------

E. Inventor's Oath or Declaration

    There is no change in oath or declaration practice for the named 
inventors in a patent application. Those named inventors must execute 
an oath or declaration unless a substitute statement is submitted on 
their behalf.\86\ As explained in section III above, only a natural 
person(s) can be listed as the inventor or joint inventors. Therefore, 
no oath, declaration, or substitute

[[Page 10051]]

statement should be filed on behalf of an AI system, even if the AI 
system made contributions to one or more claims in a patent 
application.
---------------------------------------------------------------------------

    \86\ See 35 U.S.C. 115(d).
---------------------------------------------------------------------------

F. Applicant and Ownership

    The word ``applicant,'' when used in 37 CFR, refers to the inventor 
or all joint inventors, or to the person applying for a patent as 
provided in 37 CFR 1.43, 1.45, or 1.46.\87\ The original applicant is 
presumed to be the owner of the patent application unless there is an 
assignment.\88\ As the ownership of a patent or application for a 
patent initially vests in the named inventors \89\ and is thereafter 
transferrable through assignments, there is no change in practice for 
AI-assisted inventions with regard to the applicant or assignment of 
ownership rights.\90\ The named inventor or joint inventors may seek 
patent rights as the applicant under Sec.  1.45. Alternatively, the 
named inventor or joint inventors may assign their ownership rights to 
an assignee (e.g., employer, owner or developer of the AI system, or 
other appropriate party), who may then file a patent application under 
Sec.  1.46 or take action in a patent matter under Sec.  3.73.
---------------------------------------------------------------------------

    \87\ 37 CFR 1.42(a).
    \88\ See 37 CFR 3.73(a); see also MPEP 301(I).
    \89\ See Beech Aircraft, 990 F.2d at 1248 (``At the heart of any 
ownership analysis lies the question of who first invented the 
subject matter at issue, because the patent right initially vests in 
the inventor who may then, barring any restrictions to the contrary, 
transfer that right to another, and so forth.'').
    \90\ See MPEP 301.
---------------------------------------------------------------------------

    ``Assignment,'' in general, is the act of transferring to another 
the ownership of one's property, i.e., the interest and rights to the 
property.\91\ Because an AI system cannot be a named inventor, it has 
no rights to assign; therefore, assignments from AI systems should not 
be recorded with the USPTO. This guidance only applies to recording the 
assignments and other documents related to interests in patent 
applications and patents in the USPTO and does not apply to contractual 
or licensing agreements between parties owning and using AI systems in 
the invention creation process. Applicants should keep in mind that the 
recording of assignments and other related documents by the USPTO is a 
ministerial act, and assignments and other related documents are 
contracts that are governed by the relevant jurisdictional law.\92\
---------------------------------------------------------------------------

    \91\ See MPEP 301 (subsection II).
    \92\ See MPEP 301 (subsections II and V).
---------------------------------------------------------------------------

G. Benefit/Priority Claims to Prior-Filed Applications

    Applications and patents claiming the benefit of, or priority to, a 
prior application filed in the United States or a foreign country under 
35 U.S.C. 119, 120, 121, 365, or 386 must name the same inventor or 
have at least one joint inventor in common with the prior-filed 
application.\93\ For all applications and patents, including those that 
cover AI-assisted inventions, the prior-filed application and the 
United States application or patent claiming the benefit of, or 
priority to, the prior-filed application must name the same natural 
person as the inventor, or have at least one joint inventor who is a 
natural person in common. Therefore, a priority claim to a foreign 
application that names an AI system as the sole inventor will not be 
accepted. This policy also applies to U.S. patent applications and 
patents claiming priority to foreign applications that allow the naming 
of non-natural persons as joint inventors. For a U.S. application 
claiming priority to a foreign application that names both a natural 
person(s) and a non-natural person as a joint inventor, the application 
data sheet accompanying the application filed in the United States must 
list as inventor(s) only the natural person(s) who significantly 
contributed to the invention, including one in common with the foreign 
application. Similarly, for an application entering the national stage 
under 35 U.S.C. 371 where the international application indicates a 
joint inventor that is not a natural person, applicants can comply with 
the U.S. inventorship requirement by naming the natural person(s) who 
significantly contributed to the invention in an application data sheet 
accompanying the initial submission under 35 U.S.C. 371.\94\
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    \93\ See MPEP 213.02 (subsection II), 211.01, 1895, 2920.05(e).
    \94\ See 37 CFR 1.76; MPEP 1893.01(e).

Katherine Kelly Vidal,
Under Secretary of Commerce for Intellectual Property and Director of 
the United States Patent and Trademark Office.
[FR Doc. 2024-02623 Filed 2-12-24; 8:45 am]
BILLING CODE 3510-16-P