Federal Register, Volume 89 Issue 30 (Tuesday, February 13, 2024)

[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).
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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\
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\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]
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