Can a Robot be an Inventor? New Guidance from the Patent Office
Patents are an important part of the financial and legal landscape. Article I, section 8 of the U.S. Constitution gives the Congress power to “promote the Progress of Science and useful Arts, by securing for limited Times to . . . Inventors the exclusive Right to their respective . . . Discoveries.“ Congress exercised that power through the patent statutes, found in Title 35 of the U.S. Code.
Patent coverage can dictate the success or failure of products and companies. And billions of dollars are involved in patent licensing, patent litigation and arbitration, and patent damages.
AI complicates the patent landscape. Issues have arisen as to whether a patent can be issued for an invention made by AI and whether use of AI in formulating an invention forecloses a patent on the invention.
The Patent Office has now issued guidance on the role of AI in inventions which helps answer these questions, at least for now until they are more fully taken up by the courts. We’ll get to that in a minute. But first, let’s go over some background on inventors and patent law.
Who is an inventor?
A patent grants the exclusive right to practice an invention for a period of time. To obtain a patent, an application must be filed with the United States Patent Office, which examines the claimed invention to see if it meets the requirements for patentability. One requirement – among many – is that the patent name the inventor or inventors. Each inventor must swear that he or she “believes himself or herself to be the original inventor or an original joint inventor of a claimed invention in the application.” 35 U.S.C. § 115(b). Failure to get this right can lead to rejection of the application. 35 U.S.C. §§ 101 and 115.
So, who exactly is an inventor? The Supreme Court has told us that “conception” is the key. Pfaff v. Wells Elecs., Inc., 525 U.S. 55, 60 (1998). Conception is the mental part of invention, that 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.” Burroughs Wellcome Co. v. Barr Labs., Inc., 40 F.3d 1223, 1228 (Fed. Cir. 1994).
Reduction to practice means actually making the invention in physical form or in constructively doing so by explanation and drawings in the patent’s specification. Important as that may be, it is not enough that a person contributed to the “reduction to practice” of the conceived invention. MPEP 2109(II). To be an inventor, one must contribute to the conception of the invention. If more than one person conceives of the invention, they are joint inventors.
This is all important not only to getting the patent, but also as to who owns the invention. The inventors own the invention in the first instance. And each inventor has a right to use the invention. They can also assign ownership or license the right to use it to others. But initial ownership is critical to determining who actually owns and can exercise patent rights.
What about AI?
So, what if AI conceives the invention? Is it entitled to a patent?
That’s a hard “no.” Only human beings can be inventors. Thaler v. Vidal, 43 F.4th 1207, 1213 (Fed. Cir. 2022), cert denied, 143 S. Ct. 1783 (2023). This is because “In the Patent Act, "individuals" – and, thus, ‘inventors’ – are unambiguously natural persons.” Id. at 1213.
What about protecting inventions?
Of course, this has some significant implications for patents in particular ––and commerce in general ––once AI is introduced into the picture. If companies, for example, use AI to create important and valuable inventions, are they unable to protect them from use by competitors? If so, we may have problems realizing the potential of patents to “promote the Progress of Science and useful Arts, by securing for limited Times to . . . Inventors the exclusive Right to their respective . . . Discoveries.”
And what if some countries do allow AI to have a significant role in invention, but the United States does not? While patents are only effective within the boundaries of the countries issuing them, that could still lead to a competitive disadvantage to United States companies in foreign markets.
Patent Office Guidance
The Patent Office has now issued guidance to help patent applicants through the new issues AI poses for obtaining patents. To view it online, go to
Here is a quick summary:
1. Only natural persons can be inventors or co-inventors. This is required by the Thaler decision.
2. Use of AI does not disqualify a person from being an inventor or co-inventor.
3. A natural person can be listed as the inventor or joint inventor if the natural person contributes significantly to the AI-assisted invention. Recall that for a person to be an inventor under any circumstances, he or she must substantially contribute to the conception of the invention. That remains true whether or not AI is used to assist with the invention.
4. Merely recognizing a problem or having a general goal or research plan to pursue does not rise to the level of conception. Thus, merely presenting a problem to an AI system does not make a person an inventor or joint inventor of an invention identified from the output of the AI system. But a person can show a significant contribution if he or she constructs a prompt in view of a specific problem to elicit a particular solution from the AI system. He or she is then property considered an inventor.
5. Because merely reducing an invention to practice is not sufficient to be named an inventor, a natural person who merely recognizes the output of an AI system as an invention is not necessarily an inventor. This is particularly true if one skilled in the art would recognize the utility of the output.
6. 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.
7. 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. Thus, simply owning or running an AI system used in the creation of an invention does not, without more, make one an inventor.
8. A human inventor must significantly contribute to each claim in the patent application. A human may not invent a single independent claim and then allow the AI to take over and write additional dependent and/or independent claims. In a normal situation involving all human inventors, a named inventor need not have contributed to each claim. But, since only people can be inventors, AI cannot be the sole inventor of any claim.
9. There may be a duty to disclose the role of AI in the invention. Patent applicants have a duty to disclose to the Patent Office information that raises a prima facie case of unpatentability due to improper inventorship. Thus, applicants for AI-assisted inventions may need to disclose evidence that demonstrates a named inventor did not significantly contribute to the invention because the person's purported contribution was actually made by an AI system.
Some examples
The Patent Office provides some useful examples to help understand how all this might apply. You can find the example of a Transaxle for a Remote Control Car at: https://www.uspto.gov/sites/default/files/documents/ai-inventorship-guidance-mechanical.pdf
We don’t have room to explore all the examples here, but here is a summary of a couple of them:
In one scenario, two employees recognize that the remote-controlled model car they are tasked with designing will need a transaxle. They ask an AI system to provide a design, and it provides them a schematic for the transaxle. The employees choose the material for the transaxle and build the transaxle as shown in the schematic.
They are not inventors. Choosing a material and reducing the invention to practice was not a substantial contribution to the conception of the invention.
In another scenario, the employees ask the AI system for alternative designs. They begin to try one that has the housing separable along a horizontal plane. They discover, after experimentation, that the AI’s design for the housing needs to be modified. The casing needs to be elongated and the horizontal separation must be located in the upper third of the casing. They also determine that the axle shafts and transmissions need to be located in the lower two thirds of the casing. Finally, they determine conventional fasteners are cumbersome. So, they develop a clip fastener for attaching the transmission to the casing. They draft a claim that includes these elements.
They are proper inventors of the invention they claim. They took ththee AI output and added a substantial contribution to create the final invention. Merely using AI to assist does not negate their invention. And they were not merely explaining the state of the art or well-known concepts. What they did amounted to a new design.
What’s next?
Inventorship disputes are common in patent litigation. A defendant may defend against a claim of patent infringement by showing the patent’s named inventor wasn’t the actual inventor. It may claim the real inventor was one of its employees, so it has rights to the invention. Or it may claim to have a license from the real inventor, so it doesn’t infringe the patent. These disputes can become complicated and expensive.
Adding AI to the mix complicates things further. Imagine this situation. Company A asserts its patents, naming employee Ralph Jones as inventor, against Company B. He has assigned his rights to Company A. Company A claims Company B’s new battery design infringes its patent. Company B, looking for a defense, asks its AI system to design a battery with certain properties, and comes up with a battery design nearly the same as it is selling. It thus claims Company A’s Ralph Jones is not the inventor because AI must have designed it. Everybody has access to AI these days.
Of course, Company A may be able to show that AI used A’s design as revealed in its patent in coming up with B’s design. Or B may not be able to show that A actually used an AI system to design its battery. But maybe not. There will likely be plenty to explore and argue about when inventorship disputes arise in the brave new world of AI.
This means that documenting conception and invention must be done more carefully than ever. If no AI was used, that needs to be documented. If AI was used in part, the extent of its use needs to be carefully preserved so named inventors can prove their substantial contribution.
Final thoughts
AI can be expected to significantly contribute to progress by helping to invent new technology. But nobody ever said progress was going to be easy. Fortunately, the Patent Office has made it a little easier with its recent guidance.
Still, in the end, the courts will need to wrestle with these issues. They have the final word.