In February, the PTO released “Inventorship Guidance for AI-assisted Inventions (89 CFR 10043) and noted that the Office will issue examples to assist in the examination of applications in accord with this Guidance. I recently finished reading and annotating the Guidance and the Examples, that amounts to a short course on inventorship in all its fact-driven glory. The Guidance goes beyond factors involving the determination of inventorship, and tackles the duties of disclosed in Rule 56 and the duty of reasonable inquiry and the requirements for information. The latter can be made by the examiner “or other USPTO employee” (37 CFR s. 1.105). This can include an inquiry into inventorship and the role of AI in making the invention. Remember, the application cannot name an AI inventor, since AI is not a natural person, but the role that AI played in making the claimed invention may well be relevant to the role(s) played by the named inventors, and that role may not meet the “significant contribution” required by the Pannu standard.(Pannu v. Iolab Corp., 155 F.3d 1344 (Fed. Cir.  1998)). Put another way, “[A] new inventor cannot be named if no natural person made a significant contribution to an AI assisted invention” (89 C.F.R. 10048). So AI can “invent”, just not be named as an inventor on any claim when the application is filed.

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