Generative AI and Patent Considerations

Patent Claims and Inventorship 

The Federal Circuit in Thaler v. Vidal, No. 2021-2347, recently confirmed that an inventor under the patent statute must be a natural person. In this case, Thaler filed with the U.S. Patent Office two patent applications in which artificial intelligence was identified as the inventor. Without regard to the nature of the invention, the Federal Circuit categorically rejected this characterization of inventorship. The decision underscores human innovation as requisite for patent protection in the U.S. The Supreme Court has just refused to hear the case.

Subject to legal and regulatory developments that appear certain to come, patent strategies relating to generative AI should heed Thaler. Current attempts to claim only the output of a generative model could implicate non-human "inventorship" (and of course other issues such as printed matter) and thus lead to patent futility. A wider claim strategy will yield better results. In this regard, wider focus on training, design, tuning, or application of generative models will better satisfy inventorship requirements to preserve the possibility of patent rights. For example, conduct the disclosure meeting to explore design choices and configurations for a generative model that were selected through human effort. As another example, proceed beyond the generative model output to cover applications or adaptations for which the generative model will be most likely or valuably utilized. Claims scope that extends to cover components of a system incorporating a generative model may be especially relevant when, as current trends indicate, the generative model, whether closed or open sourced, is not homegrown but rather leveraged through a third-party API. Patent claims directed to these considerations, and not to a generative model output alone, cover human innovation, implicate inventorship by a natural person, and secure a path to patent protection.