Brevettabilità delle AI-assisted inventions

Le invenzioni solo “AI assisted” (cioè non totalmente generate da AI)  e quindi con seriio contributo umano sono brevbettabuili se quest’ultimo è significativo.

L’ufficio brevettuale usa ha appena diffuso stimolanti  guidelines (DEPARTMENT OF COMMERCE Patent and Trademark Office [Docket No. PTO–P–2023–0043]
Inventorship Guidance for AI-Assisted Inventions) (v. qui la pag. web e qui il pdf).

Ne danno notizia varie fonti tra cui Anna Maria Stein in IPKat.

L’ufficio si riferisce al precedente  Pannu v. Iolab Corp., 155 F.3d 1344, 1351 (Fed.
Cir. 1998) e diuce che la significance contribution ricorre quando ciascun coinventore: << (1) contribute in some significant manner to the conception or reduction to practice of the invention, 32 (2) make a contribution to the claimed invention that is not insignificant in quality, when that contribution is measured against the dimension of the full invention, and (3) do more than merely explain to the real inventors well-known concepts and/or the current state of the art’’ (Pannu factors)>>.

Regole applicabili anche alle AI assisted inventions: <<Although the Pannu factors are generally applied to two or more people who create an invention (i.e., joint inventors), it follows that a single person who uses an AI system to create
an invention is also required to make a significant contribution to the invention, according to the Pannu factors, to be considered a proper inventor>>.

Ed ecco alllora i suggerimenti dell’ufficio:

<< 1. A natural person’s use of an AIsystem in creating an AI-assisted invention does not negate the person’scontributions as an inventor.  The natural person can be listed as theinventor or joint inventor if the natural person contributes significantly to theAI-assisted invention.

2. Merely recognizing a problem orhaving a general goal or research plan topursue does not rise to the level ofconception.  A natural person whoonly presents a problem to an AI systemmay not be a proper inventor or jointinventor of an invention identified fromthe output of the AI system. However,a significant contribution could beshown by the way the person constructsthe prompt in view of a specificproblem to elicit a particular solutionfrom the AI system.

3. Reducing an invention to practicealone is not a significant contributionthat rises to the level of inventorship. Therefore, a natural person who merelyrecognizes and appreciates the output ofan AI system as an invention,particularly when the properties andutility of the output are apparent tothose of ordinary skill, is not necessarily an inventor.  However, a person whotakes the output of an AI system andmakes a significant contribution to theoutput to create an invention may be a proper inventor. Alternatively, incertain situations, a person whoconducts a successful experiment usingthe AI system’s output coulddemonstrate that the person provided asignificant contribution to the inventioneven if that person is unable to establish conception until the invention has been reduced to practice.

4. A natural person who develops an essential building block from which theclaimed invention is derived may beconsidered to have provided asignificant contribution to theconception of the claimed inventioneven though the person was not presentfor or a participant in each activity thatled to the conception of the claim ed invention.  In some situations, thenatural person(s) who designs, builds,or trains an AI system in view of aspecific problem to elicit a particular solution could be an inventor, where thedesigning, building, or training of the AIsystem is a significant contribution tothe invention created with the AIsystem.

5. Maintaining ‘‘intellectual domination’’ over an AI system does not, on its own, make a person an inventor of any inventions createdthrough the use of the AI system. Therefore, a person simply owning or overseeing an AI system that is used in the creation of an invention, without providing a significant contribution to the conception of the invention, does not make that person an inventor.>>