Inventorship of AI-Assisted Inventions in a Future with AGIs and ASIs

AGIs and ASIs?

Artificial intelligence (AI) is technology that enables computers to simulate human intelligence and problem-solving capabilities.? Artificial general intelligence (AGI) is a type of AI that matches or surpasses human abilities across a wide range of cognitive tasks.? Artificial superintelligence (ASI) is a type of AI with intellect far beyond human intelligence.? Although it is conventionally agreed that AGI and ASI does not yet exist, Sam Altman, CEO of OpenAI, recently stated on Sept. 23, 2024 that “It is possible that we will have superintelligence in a few thousand days (!); it may take longer, but I’m confident we’ll get there.”? See, https://ia.samaltman.com.??

What are the potential considerations for inventorship of AI-assisted inventions in a future with AGIs and ASI??

Current Legal Framework?

As of now, U.S. patent law clearly states that only natural persons can be inventors.? This was affirmed in the 2022 Federal Circuit decision in Thaler v. Vidal, which held that an AI system cannot be listed as an inventor on a patent application.?

The USPTO Guidelines on AI-Assisted Inventions (“USPTO Guidelines”), published in February 2024, reiterates this position, emphasizing that inventors must be natural persons, even when AI has been instrumental in the creation of the claimed invention.?

The Significant Contribution Standard?

The USPTO Guidelines introduce a significant contribution standard for AI-assisted inventions, requiring that a natural person must provide a significant contribution to each claim of the invention to be considered an inventor.?

As we look towards a future with more advanced AI systems like AGIs and ASIs, this standard may become increasingly challenging to apply.?

AI Builders and Trainers as Inventors?

The potential for AI builders and trainers to be considered inventors is an important aspect of the evolving landscape of AI-assisted inventions.? The USPTO Guidelines explicitly acknowledge this possibility, stating that “In certain cases the natural person 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.”?

This recognition opens up several important considerations:?

1. Investment in AGIs/ASIs: The prospect of AI builders/trainers being recognized as inventors may incentivize entities to invest in developing AGIs or ASIs capable of assisting with or even originating discoveries needed for significant scientific advances.?
2. Shift in inventorship focus: As AI systems become more advanced, we may see a shift where the builders and/or trainers of AGI/ASI systems themselves become the predominant patent holders.? Their contribution in designing and training the AI could be seen as the most significant factor in the invention process.?
3. Balancing contributions: There may be challenges in determining the relative contributions of AI builders/trainers versus those who use the AI systems.? This could lead to complex inventorship determinations, especially in cases where the AI’s capabilities are substantial.?
4. Contractual implications: The potential for AI builders/trainers to be considered inventors may lead to new types of contractual arrangements between AI system designers and users.? We may see increased attention on contracts that specify ownership of patents resulting from AI-assisted inventions.?
5. Long-term impact on innovation: Although recognizing AI builders/trainers as inventors could encourage the development of more sophisticated AI systems for research and invention, it may also raise concerns about the concentration of inventorship in the hands of AI developers.?

The Importance of Prompt Design?

Given the current legal framework, the design of prompts used to guide AGI/ASI systems in the invention process may become crucial in determining inventorship.? The USPTO Guidelines suggest that a significant contribution can be shown by the way a person constructs a prompt “in view of a specific problem, to elicit a particular solution from the AI system.”?

This implies that careful prompt engineering could potentially satisfy the “significant contribution” standard, even when working with highly advanced AI systems.? Inventors and researchers may need to focus on creating detailed, problem-specific prompts that demonstrate their intellectual contribution to the invention process.???

In a future with AGIs and ASIs, prompt-drafting strategies may emerge such as:?

1. Intentionally complex prompts: Users might design unnecessarily complex prompts to ensure they meet the “significant contribution” standard.?
2. Strategic omissions: Prompt drafters might design prompts that cause AI’s to intentionally omit certain aspects from the AI’s output, allowing human inventors to fill in the gaps and strengthen their claim to inventorship.?

Conclusions?

As we move towards a future with more advanced AI systems, the concept of inventorship in patent law will likely face significant challenges.? The current “significant contribution” standard, as well as the potential for AI builders and trainers to be considered inventors, provide a framework for addressing inventorship of AI-assisted inventions, but these may need to be reevaluated as AGIs and ASIs become a reality.?

To navigate this evolving landscape, inventors, researchers, and legal professionals will need to stay informed about developments in AI technology and patent law.? They should also consider carefully documenting their contributions to the invention process, whether in the design and training of AI systems, the creation of prompts, or the interpretation of AI-generated results.?Inventors who use AI-assistance to create inventions should consider obtaining a contract from the AI builder/trainer stating that ownership rights to any inventions created by the AI in response to a user prompt are hereby assigned to the user who designed the prompt.

As AI technology continues to advance, it will be crucial for patent offices and courts to strike a balance between encouraging innovation through AI and maintaining the integrity and purpose of the patent system.? This may require ongoing adjustments to legal frameworks and inventorship standards to keep pace with technological developments, particularly in recognizing the contributions of those who create and train the AI systems that may drive future innovations.?

-By Principal Nicholas Lanzatella, J.D., Ph.D., based on material from his SLW Institute webinar, "AI in Chemistry and Patent Law: Current and Future Issues."