AI-assisted inventions: Focusing on the similarities and differences in inventorship among IP5
The burgeoning involvement of artificial intelligence (AI) in the sphere of invention creation has brought into sharp focus the issues surrounding inventorship. To address pivotal legal concerns, such as inventorship, the China National Intellectual Property Administration (CNIPA) published the “Patent Application Guidelines for Artificial Intelligence-related Inventions (Draft for Comment)” on December 6, 2024. This article delves into the guidelines’ discourse on inventorship and compares the current pertinent provisions of the IP5 nations: China, the United States, Europe, South Korea, and Japan.
Can an AI System Be a Qualified Inventor?
The consensus across the IP5—China, the United States, Europe, South Korea, and Japan—is that an AI system cannot be named as an inventor. Under the prevailing legal frameworks and examination practices, it is stipulatively clear that only natural persons qualify as inventors. This shared understanding is consistently reflected in the legal bases, relevant regulations, and examination cases across these jurisdictions.
Conditions for a Natural Person as Inventor of AI-assisted Inventions
Examining the conditions and examples under which a natural person may be considered an eligible inventor of an AI-assisted invention, the IP5 publications present an interesting landscape. The CNIPA guidelines delineate between AI-assisted and AI-generated inventions: the former utilize AI technology as a supportive tool during the innovation process, whereas the latter are creations of AI with no substantial human contribution.
Consider, for instance, the application of AI to identify specific protein binding sites, leading to a novel drug compound. In this scenario, a natural person making creative contributions can rightfully be named the inventor. Conversely, an AI independently designing a food container exemplifies an AI-generated invention. In current legal terms, AI does not hold the inventor’s role.
The United States offers a more detailed clarification through the Inventorship Guidance for AI-Assisted Inventions issued by the United States Patent and Trademark Office (USPTO) in February 2024. This guidance specifies that while AI systems are not eligible to be listed as inventors, utilizing AI technologies does not disqualify a natural person from being recognized as an inventor if they have significantly contributed to the invention.
The guidance further stipulates that patent applications for AI-assisted inventions must name the natural person(s) contributing significantly to the invention as the inventor(s), ensuring compliance with the Pannu factors described in the guidance. Applications must not attribute inventorship to any non-natural entities, even if AI played a crucial role in the invention’s creation.
To elucidate these criteria, the USPTO provides various pro and con examples. For illustration, if a natural person merely inputs a design prompt to an AI system and the AI generates the invention, the natural person cannot be considered an inventor. Similarly, if a person follows the AI system’s output without making any substantial changes and merely selects materials to implement the design, they do not qualify as an inventor. Conversely, if a natural person identifies a defect in the AI system’s output, prompts the system to explore alternative designs, and then substantially modifies this design through experimentation, they meet the criteria for inventorship.
The Current Landscape in EPO, KIPO, and JPO
As of now, the European Patent Office (EPO), the Korean Intellectual Property Office (KIPO), and the Japan Patent Office (JPO) have yet to release specific criteria or methodologies for determining the eligibility of natural persons as inventors of AI-assisted inventions. This leaves a developing field still open for interpretation and guideline implementation in these jurisdictions.
Conclusion
As artificial intelligence deeply integrates with the invention process, legal issues such as the identification of inventors become increasingly multifaceted. Reviewing the provisions from IP5 countries reveals a consistent stance that AI cannot be recognized as an eligible inventor. However, regarding conditions and criteria for natural persons as inventors of AI-assisted inventions, regulations and practices vary, reflecting diverse stages of legal and practical advancement across countries.
This intricate dance between AI and inventorship in the realm of IP law thus continues, with national regulations gradually evolving to address these modern inventive realities.
