For U.S. Law, an Inventor Must Be a Natural Person

In February of this year, the United States Patent and Trademark Office (USPTO) issued guidelines (and a request for comments) for inventors utilizing Artificial Intelligence. These findings were presented during the panel on “Protection of AI-Generated Creations and Inventions” by Maria Beatriz Pennacchi Dellore, the USPTO Regional Intellectual Property Advisor for Mercosur, French Guiana, Guyana and Suriname. The discussion, moderated by ABPI Council Member Gustavo Escobar, also featured Professor Alberto de Sá e Mello from the Portuguese Intellectual Property Law Association (APDI).

In her presentation, Maria Beatriz Dellore referenced two decisions by the U.S. federal courts that upheld the USPTO’s rejection of petitions seeking to name an AI system as the inventor. The court concluded that an inventor must be a natural person.

One of the key guidelines from the USPTO, which applies to utility, plant, and design patent applications, is that AI-assisted inventions can indeed be patentable. However, the applications must name the natural persons who made significant contributions to the invention. This does not preclude these individuals from being recognized as inventors or co-inventors if they have played a substantial role in the invention.

Another important recommendation is that patent applications and grants should not list any entity other than a natural person as the inventor or co-inventor, even if an AI system played a crucial role in the creation of the claimed invention.

In his presentation, Sá e Mello explored the ownership of AI-generated inventions. Among the various authorship scenarios, he proposed a solution considering three parties as rights holders: the programmer, the investor, and the programs that contributed to the invention. “We cannot overlook the users of the AI system who contributed to the final work, nor the rights of the programmers who operate the AI system,” he stated.