Federal Register / Vol. 89, No. 30 / Tuesday, February 13, 2024 / Notices 10043 

ACTION: Notice of information collection, 

request for comment. 

SUMMARY: The Department of 

Commerce, in accordance with the 

Paperwork Reduction Act of 1995 

(PRA), invites the general public and 

other Federal agencies to comment on 

proposed, and continuing information 

collections, which helps us assess the 

impact of our information collection 

requirements and minimize the public’s 

reporting burden. The purpose of this 

notice is to allow for 60 days of public 

comment preceding submission of the 

collection to OMB. 

DATES: To ensure consideration, 

comments regarding this proposed 

information collection must be received 

by April 15, 2024. 

ADDRESSES: Interested persons are 

invited to submit written comments to 

Adrienne Thomas, NOAA PRA Officer, 

at noaa.pra@noaa.gov. Please reference 

OMB Control Number 0648–0551 in the 

subject line of your comments. Do not 

submit confidential business 

information or otherwise sensitive or 

protected information. 

FOR FURTHER INFORMATION CONTACT: 

Requests for additional information or 

specific questions related to collection 

activities should be directed to Britni 

LaVine, NMFS, Southeast Regional 

Office, Sustainable Fisheries Division, 

263 13th Ave. South, St. Petersburg, FL 

33701, 727–824–5305, britni.lavine@

noaa.gov. 

SUPPLEMENTARY INFORMATION: 

I. Abstract 

This is a request for an extension of 

an approved information collection. The 

NMFS Southeast Regional Office 

manages three commercial individual 

fishing quota (IFQ) and individual 

transferable quota (ITQ) programs in the 

NMFS Southeast Region under the 

authority of the Magnuson-Stevens 

Fishery Conservation and Management 

Act (Magnuson-Stevens Act), 16 U.S.C. 

1801 et seq. The IFQ programs for red 

snapper, and groupers and tilefishes 

occur in Federal waters of the Gulf of 

Mexico (Gulf), and the ITQ program for 

wreckfish occurs in Federal waters of 

the South Atlantic. 

The NMFS Southeast Regional Office 

proposes to extend the information 

collection currently approved under 

OMB Control Number 0648–0551. This 

collection of information tracks the 

transfer and use of IFQ and ITQ shares, 

and IFQ allocation and landings by 

commercial fishermen necessary for 

NMFS to operate, administer, and 

review management of the IFQ and ITQ 

programs. Regulations for the IFQ and 

ITQ programs are located at 50 CFR part 

622. NMFS proposes no revisions to the 

existing information collections for the 

IFQ and ITQ programs approved under 

OMB Control Number 0648–0551. 

II. Method of Collection 

Information for the Gulf red snapper, 

and grouper and tilefish IFQ programs 

is collected electronically via a webbased system, through satellite-linked 

vessel monitoring systems, through a 

24-hour call line, and with paper form 

submission for landing corrections, 

closing an account, and account 

applications, as well as landing 

transactions under catastrophic 

circumstances. 

The share transfer process in the 

wreckfish ITQ program requires the 

signatures of witnesses on paper forms. 

The wreckfish ITQ program remains 

paper-based until the South Atlantic 

Fishery Management Council and 

NMFS consider whether to implement 

an electronic system. 

III. Data 

OMB Control Number: 0648–0551. 

Form Number(s): None. 

Type of Review: Regular submission— 

extension of a current information 

collection. 

Affected Public: Businesses or other 

for-profit organizations. 

Estimated Number of Respondents: 

1,064. 

Estimated Time per Response: 

• Transfer Shares, 3 minutes 

• Share Receipt, 2 minutes 

• Account Update, 2 minutes 

• Trip Ticket Update, 2 minutes 

• Transfer Allocation, 3 minutes 

• Landing Transaction Correction 

Request, 5 minutes 

• Dealer Cost Recovery Fee Submission 

through pay.gov, 3 minutes 

• Commercial Reef Fish Landing 

Location Request, 5 minutes 

• Dealer Landing Transaction Report, 6 

minutes (electronic form) 

• Dealer Landing Transaction Report, 5 

minutes (paper form used in 

catastrophic conditions only) 

• IFQ Notification of Landing, 5 

minutes 

• Gulf Reef Fish Notification of 

Landing, 3 minutes 

• IFQ Close Account, 3 minutes 

• IFQ Online Account Application, 13 

minutes 

• Wreckfish Quota Share Transfer, 20 

minutes 

Estimated Total Annual Burden 

Hours: 2,397. 

Estimated Total Annual Cost to 

Public: $651 in recordkeeping and 

reporting costs. 

Respondent’s Obligation: Mandatory, 

required to obtain or retain benefits. 

Legal Authority: Magnuson-Stevens 

Act, 16 U.S.C. 1801 et seq. 

IV. Request for Comments 

We are soliciting public comments to 

permit the Department/Bureau to: (a) 

Evaluate whether the proposed 

information collection is necessary for 

the proper functions of the Department, 

including whether the information will 

have practical utility; (b) Evaluate the 

accuracy of our estimate of the time and 

cost burden for this proposed collection, 

including the validity of the 

methodology and assumptions used; (c) 

Evaluate ways to enhance the quality, 

utility, and clarity of the information to 

be collected; and (d) Minimize the 

reporting burden on those who are to 

respond, including the use of automated 

collection techniques or other forms of 

information technology. 

Comments that you submit in 

response to this notice are a matter of 

public record. We will include or 

summarize each comment in our request 

to OMB to approve this ICR. Before 

including your address, phone number, 

email address, or other personal 

identifying information in your 

comment, you should be aware that 

your entire comment—including your 

personal identifying information—may 

be made publicly available at any time. 

While you may ask us in your comment 

to withhold your personal identifying 

information from public review, we 

cannot guarantee that we will be able to 

do so. 

Sheleen Dumas, 

Department PRA Clearance Officer, Office of 

the Under Secretary for Economic Affairs, 

Commerce Department. 

[FR Doc. 2024–02968 Filed 2–12–24; 8:45 am] 

BILLING CODE 3510–22–P 

DEPARTMENT OF COMMERCE 

Patent and Trademark Office 

[Docket No. PTO–P–2023–0043] 

Inventorship Guidance for AI-Assisted 

Inventions 

AGENCY: United States Patent and 

Trademark Office, Department of 

Commerce. 

ACTION: Examination guidance; request 

for comments. 

SUMMARY: Pursuant to the ‘‘Executive 

Order on the Safe, Secure, and 

Trustworthy Development and Use of 

Artificial Intelligence’’ (October 30, 

2023), the United States Patent and 

Trademark Office (USPTO or Office) is 


lotter on DSK11XQN23PROD with NOTICES1
10044 Federal Register / Vol. 89, No. 30 / Tuesday, February 13, 2024 / Notices 

1Request for Comments on Patenting Artificial 

Intelligence Inventions, 84 FR 44889 (August 27, 

2019). AI-assisted inventions are inventions created 

by natural persons using one or more AI systems. 

The AI system’s contribution is not inventorship, 

even if the AI system’s contributions were 

instrumental in the creation of the invention. Thaler 

v. Vidal, 43 F.4th 1207 (Fed. Cir. 2022). 

2The full report is available at www.uspto.gov/ 

sites/default/files/documents/USPTO_AI-Report_

2020-10-07.pdf. 

3The recording is available at www.uspto.gov/ 

about-us/events/aiet-partnership-series-1-kickoffuspto-aiet-activities-and-patent-policy. 

4 88 FR 9492 (February 14, 2023). 

5Comments are viewable at www.regulations.gov/ 

docket/PTO-P-2022-0045/comments. 

issuing inventorship guidance for 

inventions assisted by artificial 

intelligence (AI). The guidance provides 

clarity for USPTO stakeholders and 

personnel, including the Central 

Reexamination Unit and the Patent Trial 

and Appeal Board (PTAB or Board), on 

how the USPTO will analyze 

inventorship issues as AI systems, 

including generative AI, play a greater 

role in the innovation process. This 

guidance explains that while AI-assisted 

inventions are not categorically 

unpatentable, the inventorship analysis 

should focus on human contributions, 

as patents function to incentivize and 

reward human ingenuity. Patent 

protection may be sought for inventions 

for which a natural person provided a 

significant contribution to the 

invention, and the guidance provides 

procedures for determining the same. 

Finally, the guidance discusses the 

impact these procedures have on other 

aspects of patent practice. The USPTO 

is seeking public comments on this 

inventorship guidance for AI-assisted 

inventions. 

DATES: 

Applicability Date: The inventorship 

guidance for AI-assisted inventions is 

effective on February 13, 2024. This 

guidance applies to all applications, and 

to all patents resulting from 

applications, filed before, on, or after 

February 13, 2024. 

Comment Deadline Date: Written 

comments must be received on or before 

May 13, 2024. 

ADDRESSES: Comments must be 

submitted through the Federal 

eRulemaking Portal at 

www.regulations.gov. To submit 

comments via the portal, enter docket 

number PTO–P–2023–0043 on the 

homepage and select ‘‘Search.’’ The site 

will provide a search results page listing 

all documents associated with this 

docket. Find a reference to this 

document and select on the ‘‘Comment’’ 

icon, complete the required fields, and 

enter or attach your comments. 

Attachments to electronic comments 

will be accepted in Adobe® portable 

document format (PDF) or Microsoft 

Word® format. Because comments will 

be made available for public inspection, 

information that the submitter does not 

desire to make public, such as an 

address or phone number, should not be 

included in the comments. 

Visit the Federal eRulemaking Portal 

for additional instructions on providing 

comments via the portal. If electronic 

submission of comments is not feasible 

due to a lack of access to a computer 

and/or the internet, please contact the 

USPTO using the contact information 

below for special instructions. 

FOR FURTHER INFORMATION CONTACT: 

Matthew Sked, Senior Legal Advisor, at 

571–272–7627; or Nalini Mummalaneni, 

Senior Legal Advisor, at 571–270–1647, 

both with the Office of Patent Legal 

Administration, Office of the Deputy 

Commissioner for Patents. 

SUPPLEMENTARY INFORMATION: 

I. Background 

In August 2019, the USPTO issued a 

request for public comments on 

patenting AI-assisted inventions.1

Among the various policy questions 

raised in the notice, the USPTO 

requested comments on several issues 

involving inventorship, such as the 

different ways a natural person can 

contribute to the conception of an AIassisted invention. In October 2020, the 

USPTO published a report titled ‘‘Public 

Views on Artificial Intelligence and 

Intellectual Property Policy,’’ which 

took a comprehensive look at the 

stakeholder feedback received in 

response to the questions posed in the 

August 2019 notice.2 In June 2022, the 

USPTO held its inaugural Artificial 

Intelligence/Emerging Technologies 

Partnership meeting, which included a 

panel discussion on ‘‘Inventorship and 

the Advent of Machine Generated 

Inventions.’’ 3 The USPTO later issued a 

‘‘Request for Comments Regarding 

Artificial Intelligence and Inventorship’’ 

(RFC) on February 14, 2023.4 This RFC 

asked 11 questions, mostly regarding the 

issues involving AI and patent 

inventorship. On April 25 and May 8, 

2023, the USPTO held public listening 

sessions at the USPTO headquarters and 

Stanford University, respectively. 

During these listening sessions, the 

USPTO heard from 32 public speakers, 

and the events were attended by over 

800 attendees, both in person and 

virtually. The USPTO has received 69 

written comments from a diverse group 

of stakeholders. Comments received in 

response to the RFC can be viewed on 

the Regulations.gov docket page.5 As 

illustrated above, the USPTO has 

actively engaged with our stakeholders 

and has received extensive input from 

the public on inventorship for AIassisted inventions. Notably, numerous 

commenters expressly agreed that the 

USPTO should provide guidance 

regarding inventorship and the 

patentability of AI-assisted inventions. 

Recognizing that ‘‘[r]esponsible AI use 

has the potential to help solve urgent 

challenges while making our world 

more prosperous, productive, 

innovative, and secure,’’ while ‘‘[a]t the 

same time, irresponsible use could 

exacerbate societal harms such as fraud, 

discrimination, bias, and 

disinformation; displace and 

disempower workers; stifle competition; 

and pose risks to national security,’’ 

President Biden issued the ‘‘Executive 

Order on the Safe, Secure, and 

Trustworthy Development and Use of 

Artificial Intelligence’’ on October 30, 

2023 (Executive Order). The Executive 

Order sets forth policy and principles, 

including that: 

Promoting responsible innovation, 

competition, and collaboration will allow the 

United States to lead in AI and unlock the 

technology’s potential to solve some of 

society’s most difficult challenges. This effort 

requires investments in AI-related education, 

training, development, research, and 

capacity, while simultaneously tackling 

novel intellectual property (IP) questions and 

other problems to protect inventors and 

creators. . . . The Federal Government will 

promote a fair, open, and competitive 

ecosystem and marketplace for AI and related 

technologies so that small developers and 

entrepreneurs can continue to drive 

innovation. Doing so requires stopping 

unlawful collusion and addressing risks from 

dominant firms’ use of key assets such as 

semiconductors, computing power, cloud 

storage, and data to disadvantage 

competitors, and it requires supporting a 

marketplace that harnesses the benefits of AI 

to provide new opportunities for small 

businesses, workers, and entrepreneurs. 

Under section 5.2(c)(i) of the 

Executive Order (Promoting Innovation 

and Competition), the Executive Order 

provides that: 

(c) To promote innovation and clarify 

issues related to AI and inventorship of 

patentable subject matter, the Under 

Secretary of Commerce for Intellectual 

Property and Director of the United States 

Patent and Trademark Office (USPTO 

Director) shall: 

(i) within 120 days of the date of this order, 

publish guidance to USPTO patent examiners 

and applicants addressing inventorship and 

the use of AI, including generative AI, in the 

inventive process, including illustrative 

examples in which AI systems play different 

roles in inventive processes and how, in each 

example, inventorship issues ought to be 

analyzed. 


lotter on DSK11XQN23PROD with NOTICES1
Federal Register / Vol. 89, No. 30 / Tuesday, February 13, 2024 / Notices 10045 

6The decision is available at www.uspto.gov/ 

sites/default/files/documents/16524350_

22apr2020.pdf. 

7Thaler v. Hirshfeld, 558 F.Supp.3d 238 (E.D. Va. 

2021). 

8Thaler v. Vidal, 43 F.4th 1207, 1213 (Fed. Cir. 

2022), cert denied, 143 S. Ct. 1783 (2023). 

9 Id. at 1211 (citing Mohamad v. Palestinian 

Auth., 566 U.S. 449, 454 (2012)). 

10 Id. 

11 Id. 

12 Id. at 1213. 

In accordance with the Executive 

Order, and to continue its mission to 

drive U.S. innovation, inclusive 

capitalism, and global competitiveness, 

the USPTO is providing guidance on the 

determination of inventorship for AIassisted inventions to provide 

clarification and consistency when it 

comes to the evaluation of such issues. 

Section II of this notice provides an 

overview of the recent Federal Circuit 

decision in Thaler v. Vidal and its 

applicability to joint inventorship. 

Section III provides an assessment of the 

inventorship of AI-assisted inventions 

and its impact on patentability, and 

concludes such inventions are not 

categorically unpatentable due to 

improper inventorship if one or more 

natural persons significantly 

contributed to the invention. Section IV 

provides guidance and principles for 

determining the inventorship of an AIassisted invention. Section V explains 

the impact the inventorship 

determination for AI-assisted inventions 

has on other aspects of patent practice. 

In conjunction with issuing this 

guidance, the USPTO is issuing 

examples to provide assistance to the 

public and examiners on the application 

of this guidance in specific situations. 

The examples are posted to public at 

www.uspto.gov/initiatives/artificialintelligence/artificial-intelligenceresources. The USPTO is seeking public 

comments on the guidance as well as 

the examples. Based on the feedback 

received from its stakeholders and any 

relevant additional judicial decisions, 

the USPTO may issue further guidance, 

modify the current guidance, or issue 

additional examples. The USPTO views 

the inventorship guidance on AIassisted inventions as an iterative 

process and may continue with periodic 

supplements as AI technology continues 

to advance and/or as judicial precedent 

evolves. The USPTO invites the public 

to submit suggestions on topics related 

to AI-assisted inventorship so it can 

address them in future guidance 

supplements. 

The USPTO recognizes that AI gives 

rise to other questions for the patent 

system besides inventorship, such as 

subject matter eligibility, obviousness, 

and enablement. In addition to 

addressing inventorship, section 

5.2(c)(ii) of the Executive Order also 

provides that the USPTO Director shall, 

(ii) subsequently, within 270 days of the 

date of this order, issue additional guidance 

to USPTO patent examiners and applicants to 

address other considerations at the 

intersection of AI and IP, which could 

include, as the USPTO Director deems 

necessary, updated guidance on patent 

eligibility to address innovation in AI and 

critical and emerging technologies. 

The USPTO has been exploring issues 

at the intersection of AI and IP and is 

planning to continue to engage with our 

stakeholders as we move forward, 

issuing guidance as appropriate. 

A. Impact on Examination Procedure 

and Prior Examination Guidance 

While this guidance is focused on AIassisted inventions, portions of the 

guidance can apply to other types of 

inventions. To the extent that earlier 

guidance from the USPTO, including 

certain sections of the Manual of Patent 

Examining Procedure (9th Edition, rev. 

07.2022, February 2023) (MPEP), is 

inconsistent with the guidance set forth 

in this notice, USPTO personnel are to 

follow these guidelines. The MPEP will 

be updated in due course. 

Disclaimer: This guidance does not 

constitute substantive rulemaking and 

does not have the force and effect of 

law. The guidance sets out agency 

policy with respect to the USPTO’s 

interpretation of the inventorship 

requirements of the Patent Act in view 

of decisions by the Supreme Court of 

the United States (Supreme Court) and 

the United States Court of Appeals for 

the Federal Circuit (Federal Circuit). 

The guidance does not create any right 

or benefit, substantive or procedural, 

enforceable by any party against the 

USPTO. Rejections will continue to be 

based on the substantive law, and it is 

those rejections that are appealable to 

the PTAB and the courts. 

II. Inventors and Joint Inventors Named 

on U.S. Patents and Patent Applications 

Must Be Natural Persons 

On April 22, 2020, the USPTO issued 

a pair of decisions denying petitions to 

name the Device for the Autonomous 

Bootstrapping of Unified Sentience 

(DABUS), an AI system, as an inventor 

on two patent applications. The 

USPTO’s decisions explained that under 

current U.S. patent laws, inventorship is 

limited to a natural person(s).6 The 

USPTO’s decisions were upheld on 

September 2, 2021, in a decision from 

the United States District Court for the 

Eastern District of Virginia.7 On appeal, 

the Federal Circuit affirmed in Thaler v. 

Vidal (Thaler) the holding ‘‘that only a 

natural person can be an inventor, so AI 

cannot be.’’ 8 Specifically, the Federal 

Circuit stated that 35 U.S.C. 100(f) 

defines an inventor as ‘‘the individual 

or, if a joint invention, the individuals 

collectively who invented or discovered 

the subject matter of the invention.’’ 

(emphasis in original) The court found 

that based on Supreme Court precedent, 

the word ‘‘individual,’’ when used in 

statutes, ordinarily means a human 

being unless Congress provided some 

indication that a different meaning was 

intended.9 The court further found that 

there is nothing in the Patent Act to 

indicate Congress intended a different 

meaning, and the Patent Act includes 

other language to support the 

conclusion that an ‘‘individual’’ in the 

Patent Act refers to a natural person.10

The court therefore concluded that an 

inventor must be a natural person.11 The 

court explained, however, that it was 

not confronted with ‘‘the question of 

whether inventions made by human 

beings with the assistance of AI are 

eligible for patent protection.’’ 12

(emphasis in original) 

35 U.S.C. 100(g) defines the terms 

‘‘joint inventor’’ and ‘‘coinventor’’ as 

‘‘any 1 of the individuals who invented 

or discovered the subject matter of a 

joint invention.’’ Based on the holding 

in Thaler that an ‘‘individual’’ must 

mean a natural person, it is clear that a 

‘‘joint inventor’’ or ‘‘coinventor’’ must 

also be a natural person. In February of 

2023, the USPTO published the R– 

07.2022 revision of the MPEP, which 

included revisions to section 2109. This 

section reiterates the USPTO’s position, 

and the position expressed by the 

Federal Court in Thaler, that an 

inventor must be a natural person, and 

by extension, any joint inventor must be 

a natural person. As such, patent 

applications that name a machine on an 

application data sheet (37 CFR 1.76), an 

inventor’s oath or declaration (37 CFR 

1.63), or a substitute statement (37 CFR 

1.64) as either an inventor or joint 

inventor will be considered by the 

USPTO to have improper inventorship. 

Further, the USPTO recognizes that 

while an AI system may not be named 

an inventor or joint inventor in a patent 

or patent application, an AI system— 

like other tools—may perform acts that, 

if performed by a human, could 

constitute inventorship under our laws. 

The Thaler decisions around 

‘‘inventorship’’ are not a recognition of 

any limits on the current or future state 

of AI, but rather are an acknowledgment 

that the statutory language clearly limits 


lotter on DSK11XQN23PROD with NOTICES1
10046 Federal Register / Vol. 89, No. 30 / Tuesday, February 13, 2024 / Notices 

13 ‘‘Non-natural person’’ used in this notice refers 

to those entities that would not qualify as a natural 

person under the law (e.g., sovereigns, corporations, 

or machines). 14Pannu v. Iolab Corp., 155 F.3d 1344, 1351 (Fed. 

Cir. 1998). 15 ‘‘An application for patent that is filed under 

section 111(a) or commences the national stage 

under section 371 shall include, or be amended to 

include, the name of the inventor for any invention 

claimed in the application. Except as otherwise 

provided in this section, each individual who is the 

inventor or a joint inventor of a claimed invention 

in an application for patent shall execute an oath 

or declaration in connection with the application.’’ 

16 ‘‘When an invention is made by two or more 

persons jointly, they shall apply for patent jointly 

and each make the required oath, except as 

otherwise provided in this title.’’ 

17MPEP 2157 (‘‘Note that a rejection under preAIA [America Invents Act] 35 U.S.C. 102(f) should 

not be made if the application is subject to 

examination under the first inventor to file (FITF) 

provisions of the AIA.’’). 

18Thaler v. Vidal, 43 F.4th at 1211. 

19Pfaff v. Wells Elecs., Inc., 525 U.S. 55, 60 (1998) 

(‘‘The primary meaning of the word ‘invention’ in 

the Patent Act unquestionably refers to the 

inventor’s conception rather than to a physical 

embodiment of that idea.’’). 

20Sewall v. Walters, 21 F.3d 411, 415 (Fed. Cir. 

1994) (‘‘Determining ‘inventorship’ is nothing more 

than determining who conceived the subject matter 

at issue, whether that subject matter is recited in a 

claim in an application or in a count in an 

interference.’’); see also Ethicon, Inc. v. U.S. 

Surgical Corp., 135 F.3d 1456, 1460 (Fed. Cir. 1998) 

(‘‘Because ‘[c]onception is the touchstone of 

inventorship,’ each joint inventor must generally 

contribute to the conception of the invention.’’) 

(quoting Burroughs Wellcome Co. v. Barr Labs., 

Inc., 40 F.3d 1223, 1227–28 (Fed. Cir. 1994)). 

21Univ. of Utah v. Max-Planck-Gesellschaft Zur 

Forderung Der Wissenschaften E.V., 734 F.3d 1315, 

1323 (Fed. Cir. 2013); Fina Oil & Chem. Co. v. 

Ewen, 123 F.3d 1466, 1474 (Fed. Cir. 1997). 

22Burroughs Wellcome, 40 F.3d at 1228 (citing 

Hybritech Inc. v. Monoclonal Antibodies, Inc., 802 

F.2d 1367, 1376 (Fed. Cir. 1986) (quoting 1 

Robinson on Patents 532 (1890)). 

23See Univ. of Utah, 734 F.3d at 1323 (‘‘To 

perform this mental act, inventors must be natural 

persons and cannot be corporations or 

sovereigns.’’); Beech Aircraft Corp. v. EDO Corp., 

990 F.2d 1237, 1248 (Fed. Cir. 1993) (‘‘EDO could 

never have been declared an ‘inventor,’ as EDO was 

merely a corporate assignee and only natural 

persons can be ‘inventors.’). 

24See, e.g., U.S. Const. art. 1, s. 8, cl. 8 (‘‘The 

Congress shall have Power . . . To promote the 

Progress of Science and useful Arts, by securing for 

limited Times to Authors and Inventors the 

exclusive Right to their respective Writings and 

Discoveries.’’); Committee Reports on the 1952 

Patent Act, S. Rep. No. 1979, 82d Cong., 2d Sess., 

5 (1952); H. R. Rep. No. 1923, 82d Cong., 2d Sess., 

6 (1952) (Inventions eligible for patenting ‘‘include 

anything under the sun made by man.’’) (emphasis 

added)); Graham v. John Deere Co., 383 U.S. 1, 9 

(1966) (‘‘The patent monopoly was not designed to 

secure to the inventor [their] natural right in [their] 

discoveries. Rather, it was a reward, an inducement, 

to bring forth new knowledge. The grant of an 

exclusive right to an invention was the creation of 

society—at odds with the inherent free nature of 

disclosed ideas—and was not to be freely given. 

Only inventions and discoveries which furthered 

human knowledge, and were new and useful, 

justified the special inducement of a limited private 

monopoly.’’); Diamond v. Chakrabarty, 447 U.S. 

303, 309–310 (1980) (Under the Patent Act, a claim 

is considered patentable subject matter if it is to ‘‘a 

nonnaturally occurring manufacture or composition 

of matter—a product of human ingenuity having a 

distinctive name, character and use.’’) (emphasis 

added). 

25See, e.g., Thaler v. Perlmutter, 2023 WL 

5333236 at *4 (D.D.C. 2023) (‘‘At the founding, both 

copyright and patent were conceived of as forms of 

inventorship on U.S. patents and patent 

applications to natural persons. 

III. AI-Assisted Inventions Are Not 

Categorically Unpatentable for 

Improper Inventorship 

While AI systems and other nonnatural persons 13 cannot be listed as 

inventors on patent applications or 

patents, the use of an AI system by a 

natural person(s) does not preclude a 

natural person(s) from qualifying as an 

inventor (or joint inventors) if the 

natural person(s) significantly 

contributed to the claimed invention, as 

explained in section IV of this notice. 

Patent applications and patents for AIassisted inventions must name the 

natural person(s) who significantly 

contributed to the invention as the 

inventor or joint inventors (i.e., meeting 

the Pannu 14 factors as explained in 

section IV). Additionally, applications 

and patents must not list any entity that 

is not a natural person as an inventor or 

joint inventor, even if an AI system may 

have been instrumental in the creation 

of the claimed invention. This position 

is supported by the statutes, court 

decisions, and numerous policy 

considerations. 

A. Statutory Framework 

The requirements that a patent 

application name an ‘‘inventor’’ and 

that each individual who is named an 

‘‘inventor’’ of a claimed invention 

execute an oath or declaration are 

available in 35 U.S.C. 115(a).15 These 

inventorship requirements are extended 

to joint inventorship in 35 U.S.C. 

116(a).16 Under 35 U.S.C. 115(b), the 

oath or declaration must state, among 

other things, that ‘‘such individual 

believes himself or herself to be the 

original inventor or an original joint 

inventor of a claimed invention in the 

application.’’ Failure by the applicant to 

name the proper ‘‘inventors’’ is a ground 

for rejection under 35 U.S.C. 101 and 35 

U.S.C. 115.17

The term ‘‘inventor’’ is defined in 35 

U.S.C. 100(f) as ‘‘the individual or, if a 

joint invention, the individuals 

collectively who invented or discovered 

the subject matter of the invention’’ 

(emphases added). Additionally, the 

term ‘‘joint inventor’’ is found in 35 

U.S.C. 100(g) and is defined as ‘‘any 1 

of the individuals who invented or 

discovered the subject matter of a joint 

invention’’ (emphasis added). As stated 

in Thaler, the term ‘‘individual’’ 

ordinarily means a human being, and 

Congress did not provide any indication 

it intended a different meaning.18 The 

terms ‘‘inventor’’ and ‘‘joint inventor’’ 

have a specific meaning in the Patent 

Act: those natural persons who invent 

or discover the claimed invention. 

Therefore, the statutory requirement in 

35 U.S.C. 115 and 116 to name the 

inventor or joint inventors and require 

each to sign an oath or declaration is 

limited only to the natural persons who 

invented or discovered the claimed 

invention. These statutes do not provide 

for recognizing contributions by tools 

such as AI systems (or other advanced 

systems) for inventorship purposes, 

even if those AI systems were 

instrumental in the creation of the 

invention. 

Additionally, there are no other 

sections of the Patent Act that support 

a position that inventions that are 

created by natural person(s) using 

specific tools, including AI systems, 

result in improper inventorship or are 

otherwise unpatentable. The statutes 

only require the naming of the natural 

persons who invented or discovered the 

claimed invention, irrespective of the 

contributions provided by an AI system 

or any other advanced system. 

Accordingly, the inability to list an AI 

system, used to create an invention, as 

a joint inventor does not render the 

invention unpatentable due to improper 

inventorship. 

B. Judicial Interpretation and Policy 

Considerations 

The Supreme Court has indicated that 

the meaning of ‘‘invention’’ in the 

Patent Act refers to the inventor’s 

conception.19 Similarly, the Federal 

Circuit has made clear that conception 

is the touchstone of inventorship.20

Conception is often referred to as a 

mental act or the mental part of 

invention.21 Specifically, ‘‘[i]t is ‘the 

formation in the mind of the inventor, 

of a definite and permanent idea of the 

complete and operative invention, as it 

is hereafter to be applied in 

practice.’ ’’ 22 Because conception is an 

act performed in the mind, it has to date 

been understood as only performed by 

natural persons. The courts have been 

unwilling to extend conception to nonnatural persons.23 Hence, when a 

natural person invents using an AI 

system, the conception analysis should 

focus on the natural person(s). 

The patent system is designed to 

encourage human ingenuity.24 From its 

very inception, patents were intended to 

incentivize human individuals to invent 

and thereby promote the progress of 

science and the useful arts.25 Focusing 


lotter on DSK11XQN23PROD with NOTICES1
Federal Register / Vol. 89, No. 30 / Tuesday, February 13, 2024 / Notices 10047 

property that the government was established to 

protect, and it was understood that recognizing 

exclusive rights in that property would further the 

public good by incentivizing individuals to create 

and invent. The act of human creation—and how 

to best encourage human individuals to engage in 

that creation, and thereby promote science and the 

useful arts—was thus central to American copyright 

from its very inception. Non-human actors need no 

incentivization with the promise of exclusive rights 

under United States law, and copyright was 

therefore not designed to reach them.’’). 

26 Vapor Point LLC v. Moorhead, 832 F.3d 1343, 

1348–49 (Fed. Cir. 2016). 

27MPEP 2109 (subsection II). 

28MPEP 2109.01. 

29 Fina Oil, 123 F.3d at 1473 (‘‘[A] joint inventor 

must contribute in some significant manner to the 

conception of the invention.’’). 

30The USPTO recognizes there are divergent 

views on the level of contribution AI systems can 

make in the invention creation process. See, e.g., 

Response to the RFC from American Intellectual 

Property Law Association at 3 (‘‘[E]ven if AI were 

considered or categorized as equivalent to a human, 

its contributions would not rise to the level of joint 

inventorship, as the core inventive concepts and 

decisions remain within the purview of the human 

inventors.’’); Response to the RFC from 

International Federation of Intellectual Property 

Attorneys (FICPI) at 3 (‘‘FICPI takes the position 

that AI is becoming powerful and creative enough 

to generate patentable contributions to inventions to 

which a human has arguably not made an inventive 

contribution but instead has directed the AI to 

endeavor towards the solution to a problem.’’). 

Comments are viewable at www.regulations.gov/ 

docket/PTO-P-2022-0045/comments. 

31 35 U.S.C. 116(a). 

32While these factors do refer to reduction to 

practice, applicants are reminded that the main 

inquiry is who conceived of the invention. 

Reduction to practice, per se, is generally irrelevant 

to this inquiry. MPEP 2109(II) (citing Fiers v. Revel, 

984 F.2d 1164, 1168 (Fed. Cir. 1993)). The mention 

of reduction to practice in the Pannu factors is an 

acknowledgement of the simultaneous conception 

and reduction to practice doctrine used in 

unpredictable technologies. See, e.g., Amgen, Inc. v. 

Chugai Pharm. Co., 927 F.2d 1200, 1206 (Fed. Cir. 

1991). The Pannu factors are not a basis to conclude 

that reduction to practice, alone, is sufficient to 

demonstrate inventorship. 

33Pannu, 155 F.3d at 1351. 

34HIP, Inc. v. Hormel Foods Corp., 66 F.4th 1346, 

1353 (Fed. Cir. 2023) (citing Pannu, 155 F.3d at 

1351 (‘‘a joint inventor must contribute in a 

significant manner to the conception or reduction 

to practice of the invention, make a contribution to 

the invention that is not insignificant, and do more 

than explain well-known concepts or the current 

state of the art’’)) (emphasis in original). 

35MPEP 2138.04(I) (citing In re VerHoef, 888 F.3d 

1362, 1366–67, 126 F.2d 1561, 1564–65 (Fed. Cir. 

2018). 

36Townsend v. Smith, 36 F.2d 292, 295 (CCPA 

1929). 

37 35 U.S.C. 102(g)(1) (‘‘In determining priority of 

invention under this subsection, there shall be 

considered not only the respective dates of 

conception and reduction to practice of the 

invention, but also the reasonable diligence of one 

who was first to conceive and last to reduce to 

practice, from a time prior to conception by the 

other.’’). 

38Silvestri v. Grant, 496 F.2d 593, 597 (CCPA 

1974); Heard v. Burton, 333 F.2d 239, 244 (CCPA 

1964) (‘‘In the present case it is the recognition and 

appreciation of the invention which was lacking to 

Dr. Heard prior to April 23, 1952 [appellees’ filing 

date].’’). 

39 Invitrogen Corp. v. Clontech Labs., Inc., 429 

F.3d 1052, 1063 (Fed. Cir. 2005). 

40Amgen, Inc. v. Chugai Pharm. Co., 927 F.2d 

1200, 1206 (Fed. Cir. 1991) (‘‘Conception requires 

both the idea of the invention’s structure and 

possession of an operative method of making it.’’) 

(citing Oka v. Youssefyeh, 849 F.2d 581, 583 (Fed. 

Cir. 1988)). 

41MPEP 2109(II) (citing Fiers v. Revel, 984 F.2d 

1164, 1168 (Fed. Cir. 1993)). 

42See Pannu, 155 F.3d at 1351 (citing Fina Oil). 

43 Fina Oil, 123 F.3d at 1473; see also, e.g., 

Amgen, 927 F.2d at 1206. 

the patentability of AI-assisted 

inventions on the human contributions 

supports this policy objective by 

incentivizing human-centered activities 

and contributions, and by providing 

patent protections to inventions with 

significant human contributions while 

prohibiting patents on those that are not 

invented by natural persons. This 

approach supports the USPTO’s goal of 

helping to ensure our patent system 

strikes the right balance between 

protecting and incentivizing AI-assisted 

inventions and not hindering future 

human innovation by locking up 

innovation created without human 

ingenuity. 

IV. Naming Inventors for AI-Assisted 

Inventions 

The patent statutes require the 

naming of all inventors who contributed 

to at least one claim of a patent.26 The 

threshold question in determining the 

named inventor(s) is who contributed to 

the conception of the invention.27 In 

situations where a single person did not 

conceive the entire invention (e.g., joint 

inventorship), courts have found that a 

person who shares in the conception of 

the invention is an inventor.28 In these 

situations, each named inventor in a 

patent application or patent, including 

an application or a patent for an AIassisted invention, must have made a 

‘‘significant contribution’’ 29 to the 

claimed invention.30

A. Significant Contribution 

When evaluating the contributions 

made by natural persons in the 

invention creation process, it is 

important to keep in mind they may 

apply for a patent jointly, ‘‘even though 

(1) they did not physically work 

together or at the same time, (2) each 

did not make the same type or amount 

of contribution, or (3) each did not make 

a contribution to the subject matter of 

every claim of the patent.’’ 31 Instead, 

each inventor must contribute in some 

significant manner to the invention. In 

making this determination, the courts 

have looked to several factors, such that 

each inventor must: ‘‘(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).33 Courts have found that a 

failure to meet any one of these factors 

precludes that person from being named 

an inventor.34

As for the first Pannu factor, ‘‘[a] 

person who shares in conception of a 

claimed invention is a joint inventor of 

the invention.’’ 35 In other words, each 

named inventor must have significantly 

contributed to the ‘‘definite and 

permanent idea of the complete and 

operative invention as it is thereafter 

applied in practice.’’ 36

In addition to inventorship disputes, 

the courts have extensively addressed 

the issue of conception in connection 

with interference proceedings under 

pre-America Invents Act 35 U.S.C. 

102(g), and the USPTO views that body 

of caselaw as instructive. In particular, 

interference proceedings involve 

determining the date of conception for 

competing inventions. That inquiry, in 

turn, requires determining what 

activities are sufficient for conception 

and by whom.37 In these decisions, the 

courts have recognized there must be a 

contemporaneous recognition and 

appreciation of the invention for there 

to be conception.38 Put simply, 

conception does not occur when there is 

only an ‘‘unrecognized accidental 

creation.’’ 39 While recognition and 

appreciation are generally required for 

complete conception, there is no 

requirement that each inventor 

recognize and appreciate the invention. 

Therefore, each inventor must make a 

significant contribution to the 

conception of the invention, and at least 

one inventor must have recognition and 

appreciation.40

The fact that a human performs a 

significant contribution to reduction to 

practice of an invention conceived by 

another is not enough to constitute 

inventorship. It is settled law that such 

contributions are insufficient to 

demonstrate inventorship.41 Although 

the first Pannu factor refers to ‘‘the 

conception or reduction to practice of 

the invention,’’ the court did so by 

citing an earlier Federal Circuit decision 

concerning ‘‘the doctrine of 

simultaneous conception and reduction 

to practice.’’ 42 Pursuant to that 

doctrine, ‘‘in some instances, an 

inventor may only be able to establish 

a conception by pointing to a reduction 

to practice through a successful 

experiment.’’ 43 This concept of 


lotter on DSK11XQN23PROD with NOTICES1
10048 Federal Register / Vol. 89, No. 30 / Tuesday, February 13, 2024 / Notices 

44Hitzeman v. Rutter, 243 F.3d 1345, 1357–58 

(Fed Cir. 2001) (Inventor’s ‘‘hope’’ that a genetically 

altered yeast would produce antigen particles 

having the particle size and sedimentation rates 

recited in the claims did not establish conception, 

since the inventor did not show a ‘‘definite and 

permanent understanding’’ as to whether or how, or 

a reasonable expectation that, the yeast would 

produce the recited antigen particles.). 

45 Id. 

46Pannu, 155 F.3d at 1351. 

47MPEP 2109.01. 

48 35 U.S.C. 115(a) (‘‘An application for patent 

that is filed under section 111(a) or commences the 

national stage under section 371 shall include, or 

be amended to include, the name of the inventor 

for any invention claimed in the application.’’) 

(emphasis added). 

49 Fina Oil, 123 F.3d at 1473 (‘‘The determination 

of whether a person is a joint inventor is fact 

specific, and no bright-line standard will suffice in 

every case.’’); see also In re Jolley, 308 F.3d 1317, 

1323 (Fed. Cir. 2002) (‘‘[T]he conception inquiry is 

fact-intensive . . . ’’). 

50See MPEP 2157; see also MPEP 602.01 (‘‘The 

inventorship of a nonprovisional application under 

35 U.S.C. 111(a) is the inventor or joint inventors 

set forth in the application data sheet in accordance 

with [37 CFR] § 1.76 filed before or concurrently 

with the inventor’s oath or declaration.’’). 

51MPEP 2157. 

52See section V(C) below. 

53Cf. Shatterproof Glass Corp. v. Libbey-Owens 

Ford Co., 758 F.2d 613, 624 (Fed. Cir. 1985) (‘‘An 

inventor ‘may use the services, ideas, and aid of 

others in the process of perfecting [their] invention 

without losing [their] right to a patent.’’’) (quoting 

Hobbs v. U.S. Atomic Energy Comm., 451 F.2d 849, 

864 (5th Cir. 1971)). 

54Burroughs Wellcome, 40 F.3d at 1228 (‘‘An idea 

is definite and permanent when the inventor has a 

specific, settled idea, a particular solution to the 

problem at hand, not just a general goal or research 

plan [the inventor] hopes to pursue.’’); see also 

Hitzeman, 243 F.3d 1345, 1357–58; In re Verhoef, 

888 F.3d 1362, 1366 (Fed. Cir. 2018) (Verhoef’s 

recognition of the problem of connecting the cord 

of the harness to the dog’s toes did not make 

Verhoef the sole inventor; Lamb’s proposed 

solution to that problem was a significant 

contribution). 

55MPEP 2109 (subsection III). 

56See e.g., Solvay S.A. v. Honeywell Intern. Inc., 

622 F.3d 1367, 1378–79 (Fed. Cir. 2010) (finding 

that deriving the invention of another and 

appreciating what was made did not rise to the 

level of conception). 

simultaneous conception and reduction 

to practice is sometimes pertinent in 

unpredictable arts, where, for example, 

the inventor does not have a reasonable 

expectation that they would produce the 

claimed invention.44 Under those 

circumstances, the conception of a 

specific chemical compound does not 

occur until the reduction to practice 

occurs.45 Therefore, the reference to 

reduction to practice in the first Pannu 

factor is simply an acknowledgement of 

this doctrine, and it does not imply that 

reduction to practice is sufficient for 

invention or is a substitute for 

conception. 

In the context of AI-assisted 

inventions, natural person(s) who create 

an invention using an AI system, or any 

other advanced system, must contribute 

significantly to the invention, as 

specified by the Pannu factors.46

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. 

There is no requirement for a named 

inventor to contribute to every claim in 

an application or patent; a contribution 

to a single claim is sufficient.47

However, each claim must have been 

invented by at least one named 

inventor.48 In other words, a natural 

person must have significantly 

contributed to each claim in a patent 

application or patent. In the event of a 

single person using an AI system to 

create an invention, that single person 

must make a significant contribution to 

every claim in the patent or patent 

application. Inventorship is improper in 

any patent or patent application that 

includes a claim in which at least one 

natural person did not significantly 

contribute to the claimed invention, 

even if the application or patent 

includes other claims invented by at 

least one natural person. Therefore, a 

rejection under 35 U.S.C. 101 and 115 

should be made for each claim for 

which an examiner or other USPTO 

employee determines from the file 

record or extrinsic evidence that at least 

one natural person, i.e., one or more 

named inventors, did not significantly 

contribute. 

When applying the Pannu factors to 

determine whether natural persons 

significantly contributed to an AIassisted invention, one must remember 

this determination is made on a claimby-claim and case-by-case basis, and 

each instance turns on its own facts.49

Generally, the USPTO presumes those 

inventors named on the application data 

sheet or oath/declaration are the actual 

inventor or joint inventors of the 

application.50 However, examiners and 

other USPTO personnel should 

carefully evaluate the facts from the file 

record or other extrinsic evidence when 

making determinations on inventorship. 

When the facts or evidence indicates 

that the named inventor or joint 

inventors did not contribute 

significantly to the claimed invention, 

i.e., their contributions do not satisfy 

the Pannu factors for a particular claim, 

a rejection under 35 U.S.C. 101 and 115 

is appropriate.51 While inventorship 

may be correctable in certain situations 

under 37 CFR 1.48 or 1.324,52 a new 

inventor cannot be named if no natural 

person made a significant contribution 

to an AI-assisted invention. 

Additionally, a rejection under 35 

U.S.C. 101 and 115, or other appropriate 

action, should be made for all claims in 

any application that lists an AI system 

or other non-natural person as an 

inventor or joint inventor. 

Given the increasing use of AI 

systems in the invention creation 

process, applicants should take extra 

care in ensuring each named inventor in 

a patent application or patent provided 

a significant contribution to a claimed 

invention as described by the Pannu 

factors. 

B. Guiding Principles 

Determining whether a natural 

person’s contribution in AI-assisted 

inventions is significant may be difficult 

to ascertain, and there is no bright-line 

test. To assist applicants and USPTO 

personnel in determining proper 

inventorship, the USPTO provides the 

following non-exhaustive list of 

principles that can help inform the 

application of the Pannu factors in AIassisted inventions: 

1. A natural person’s use of an AI 

system in creating an AI-assisted 

invention does not negate the person’s 

contributions as an inventor.53 The 

natural person can be listed as the 

inventor or joint inventor if the natural 

person contributes significantly to the 

AI-assisted invention. 

2. Merely recognizing a problem or 

having a general goal or research plan to 

pursue does not rise to the level of 

conception.54 A natural person who 

only presents a problem to an AI system 

may not be a proper inventor or joint 

inventor of an invention identified from 

the output of the AI system. However, 

a significant contribution could be 

shown by the way the person constructs 

the prompt in view of a specific 

problem to elicit a particular solution 

from the AI system. 

3. Reducing an invention to practice 

alone is not a significant contribution 

that rises to the level of inventorship.55

Therefore, a natural person who merely 

recognizes and appreciates the output of 

an AI system as an invention, 

particularly when the properties and 

utility of the output are apparent to 

those of ordinary skill, is not necessarily 

an inventor.56 However, a person who 

takes the output of an AI system and 

makes a significant contribution to the 

output to create an invention may be a 

proper inventor. Alternatively, in 

certain situations, a person who 

conducts a successful experiment using 

the AI system’s output could 


lotter on DSK11XQN23PROD with NOTICES1
Federal Register / Vol. 89, No. 30 / Tuesday, February 13, 2024 / Notices 10049 

57See MPEP 2138.04 (subsection II); see also 

Dana-Farber Cancer Inst., Inc. v. Ono Pharm. Co., 

964 F.3d 1365, 1373–74 (Fed. Cir. 2020) (Dr. 

Freeman’s identification of the 292 sequences in the 

BLAST database (an automated search tool for 

finding similarity between biological sequences) 

and subsequent immunohistochemistry 

experiments to identify several types of tumors that 

express PD–L1 were found sufficient to make him 

a joint inventor.). 

58 Dana-Farber, 964 F.3d at 1372–74 (Drs. 

Freeman and Wood were found to be joint inventors 

even though they did not conceive of the claimed 

invention of using anti-PD–1 antibodies to treat 

tumors but instead discovered the expression of 

PD–L1 in human tumors and that PD–1/PD–LI 

interaction inhibits the immune response.). 

59 Verhoef, 888 F.3d at 1367 (court refused to 

endorse the ‘‘intellectual domination’’ language and 

emphasized that the person who conceives of the 

invention is the inventor). 

60See 35 U.S.C. 171. 

61Hoop v. Hoop, 279 F.3d 1004, 1007 (Fed. Cir. 

2002) (‘‘We apply the same standard of 

inventorship to design patents that we require for 

utility patents.’’) (citing In re Rousso, 222 F.2d 729, 

731 (CCPA 1955)). 

62See 35 U.S.C. 161. 

63 In re Beineke, 690 F.3d 1344, 1352 (Fed. Cir. 

2012). 

64 Id. at 1348. 

65See 37 CFR 1.56, 1.555. For patent 

applications, including reissue applications, these 

individuals include each inventor named in the 

application, each attorney or agent who prepares or 

prosecutes the application, and ‘‘[e]very other 

person who is substantively involved in the 

preparation or prosecution of the application and 

who is associated with the inventor, the applicant, 

an assignee, or anyone to whom there is an 

obligation to assign the application.’’ 37 CFR 

1.56(c); see 37 CFR 1.171. For reexamination 

proceedings, these individuals include ‘‘the patent 

owner, each attorney or agent who represents the 

patent owner, and every other individual who is 

substantively involved on behalf of the patent 

owner in a reexamination proceeding.’’ 37 CFR 

1.555(a). 

66 37 CFR 1.56(a), 1.555(a). 

67See 37 CFR 42.11; see also Lectrosonics, Inc. v. 

Zaxcom, Inc., IPR2018–01129, 01130, Paper 15 at 

9–10 (PTAB Feb. 25, 2019) (precedential) (‘‘Under 

37 CFR 42.11, all parties have a duty of candor, 

which includes a patent owner’s duty to disclose 

to the Board information of which the patent owner 

is aware that is material to the patentability of 

substitute claims, if such information is not already 

of record in the case.’’). 

68MPEP 2157. 

69See MPEP 2016. 

demonstrate that the person provided a 

significant contribution to the invention 

even if that person is unable to establish 

conception until the invention has been 

reduced to practice.57

4. A natural person who develops an 

essential building block from which the 

claimed invention is derived may be 

considered to have provided a 

significant contribution to the 

conception of the claimed invention 

even though the person was not present 

for or a participant in each activity that 

led to the conception of the claimed 

invention.58 In some situations, the 

natural person(s) 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. 

5. Maintaining ‘‘intellectual 

domination’’ over an AI system does 

not, on its own, make a person an 

inventor of any inventions created 

through the use of the AI system.59

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. 

V. Patent Practice 

A. Applicability of This Guidance to 

Design and Plant Patent Applications 

and Patents 

35 U.S.C. 171 provides that a patent 

for a design may be obtained by 

‘‘[w]hoever invents any new, original, 

and ornamental design for an article of 

manufacture’’ and that the provisions 

related to utility patents are applicable 

to design patents, except as otherwise 

provided (e.g., in 35 U.S.C. 172–173).60

The Federal Circuit has interpreted 35 

U.S.C. 171 such that the inventorship 

inquiry is the same for a design patent 

and a utility patent.61

35 U.S.C. 161 provides that a plant 

patent may be obtained by ‘‘[w]hoever 

invents or discovers and asexually 

reproduces’’ a distinct and new variety 

of plant.62 35 U.S.C. 161 limits patent 

protection to plants ‘‘that were created 

as a result of plant breeding or other 

agricultural and horticultural efforts and 

that were created by the inventor’’ 

(emphasis in original).63 That is, to be 

entitled to patent protection, the 

inventor of a plant must have 

contributed to the creation of the plant 

in addition to having appreciated its 

uniqueness and asexually reproduced 

it.64 This is true for new and distinct 

plant varieties invented with the 

assistance of AI. The use of an AI 

system by a natural person(s) does not 

preclude the natural person(s) from 

qualifying as an inventor (or joint 

inventors) of the claimed plant as long 

as the plant was created with significant 

contribution(s) from the natural 

person(s). 

Therefore, this guidance regarding AIassisted inventions applies not only to 

utility patents and patent applications 

but also to design and plant patents and 

patent applications. 

B. Duties Owed to the USPTO 

(i) Duty of Disclosure 

‘‘Each individual associated with the 

filing and prosecution of a patent 

application’’ and ‘‘[e]ach individual 

associated with the patent owner in a 

reexamination proceeding’’ has a duty 

of candor and good faith in dealing with 

the USPTO.65 Included within the duty 

of candor and good faith is the duty to 

disclose all known information that is 

material to patentability.66 This duty 

extends to parties and individuals 

associated with proceedings before the 

PTAB and the Office of the 

Commissioner for Patents.67 37 CFR 

1.56(b) states that ‘‘[I]nformation is 

material to patentability when it is not 

cumulative to information already of 

record or being made of record in the 

application, and (1) [i]t establishes, by 

itself or in combination with other 

information, a prima facie case of 

unpatentability of a claim; or (2) [i]t 

refutes, or is inconsistent with, a 

position the applicant takes in: (i) 

[o]pposing an argument of 

unpatentability relied on by the Office, 

or (ii) [a]sserting an argument of 

patentability.’’ 

The USPTO is not changing or 

modifying its duty of disclosure. 

However, applicants and patent owners 

are reminded of their existing duty of 

disclosure and its applicability to the 

inventorship determination. Because 

improper inventorship is a ground of 

rejection under 35 U.S.C. 101 and 115,68

parties identified in 37 CFR 1.56(c), 

1.555(a), and 42.11(a) have a duty to 

disclose to the USPTO information that 

raises a prima facie case of 

unpatentability due to improper 

inventorship or that refutes, or is 

inconsistent with, a position an 

applicant takes in opposing an 

inventorship rejection or asserting 

inventorship. For example, in 

applications for AI-assisted inventions, 

this information could include evidence 

that demonstrates a named inventor did 

not significantly contribute to the 

invention because the person’s 

purported contribution(s) was made by 

an AI system. 

At this time, to meet their duty of 

disclosure, applicants rarely need to 

submit information regarding 

inventorship. The USPTO does not 

believe this inventorship guidance will 

have a major impact on applicants’ 

disclosure requirements. However, 

special care should be taken by those 

individuals subject to this duty to 

ensure all material information is 

submitted to the USPTO to avoid any 

potential negative consequences.69

(ii) Duty of Reasonable Inquiry 

37 CFR 1.4(d)(4)(i) states that ‘‘[t]he 

presentation to the Office (whether by 


lotter on DSK11XQN23PROD with NOTICES1
10050 Federal Register / Vol. 89, No. 30 / Tuesday, February 13, 2024 / Notices 

70See 37 CFR 11.18(b)(2): ‘‘To the best of the 

party’s knowledge, information and belief, formed 

after an inquiry reasonable under the 

circumstances, (i) The paper is not being presented 

for any improper purpose, such as to harass 

someone or to cause unnecessary delay or needless 

increase in the cost of any proceeding before the 

Office; (ii) The other legal contentions therein are 

warranted by existing law or by a nonfrivolous 

argument for the extension, modification, or 

reversal of existing law or the establishment of new 

law; (iii) The allegations and other factual 

contentions have evidentiary support or, if 

specifically so identified, are likely to have 

evidentiary support after a reasonable opportunity 

for further investigation or discovery; and (iv) The 

denials of factual contentions are warranted on the 

evidence, or if specifically so identified, are 

reasonably based on a lack of information or belief.’’ 

71Compare 37 CFR 11.18(b)(2) with Fed. R. Civ. 

P. 11(b) (2007). See also MPEP 410. 

72MPEP 410. 

73See MPEP 2004. 

74 Id. (‘‘2. It is desirable to ask questions about 

inventorship. Who is the proper inventor? Are there 

disputes or possible disputes about inventorship? If 

there are questions, call them to the attention of the 

U.S. Patent and Trademark Office.’’). 75See MPEP 2109. 76See MPEP 602.01 for more information on 

naming the inventor or joint inventor in an 

application. 77See MPEP 1481.02 and 1402 (subsection II). 78See MPEP 602.01(c). 79See id. for more information on correction of 

inventorship. 80See MPEP 2003. 

81See, e.g., MPEP 602.09. 

82 37 CFR 1.105(a)(l). 

83See MPEP 704.12(a). 

84MPEP 704.10. 

85See id. (Examiners can request information 

under 37 CFR 1.105 in accordance with the policies 

and practices set forth by their respective 

Technology Centers). 

86See 35 U.S.C. 115(d). 

signing, filing, submitting, or later 

advocating) of any paper by a party, 

whether a practitioner or 

nonpractitioner, constitutes a 

certification under § 11.18(b).’’ Section 

11.18(b) includes § 11.18(b)(2), which 

calls for an ‘‘inquiry reasonable under 

the circumstances’’ to ensure that the 

paper is not being presented for any 

improper purpose, the legal contentions 

are warranted by law, the allegations 

and other factual contentions have 

evidentiary support, and the denials of 

factual contentions are warranted on the 

evidence.70 The duty of reasonable 

inquiry pursuant to 37 CFR 11.18(b)(2) 

is identical to that in Fed. R. Civ. P. 

11(b).71 Accordingly, each party 

presenting a paper to the USPTO, 

whether a practitioner or nonpractitioner, has a duty to perform an 

inquiry that is reasonable under the 

circumstances. A duty of reasonable 

inquiry may exist based on 

circumstances known to the party 

presenting the paper to the USPTO. 

Failing to inquire when the 

circumstances warrant such an inquiry 

may jeopardize the validity of the 

application or document, or the validity 

or enforceability of any patent or 

certificate resulting therefrom, and 

could result in sanctions or other 

actions under 37 CFR 11.18(c).72

The USPTO is not changing or 

modifying its duty of reasonable 

inquiry. The USPTO has previously 

provided examples of possible 

procedures that could help avoid 

problems with the duty of disclosure.73

These examples should be carefully 

considered because they may be helpful 

in ascertaining what a reasonable 

inquiry may require. For example, 

patent practitioners who are preparing 

and prosecuting an application should 

inquire about the proper inventorship.74

Given the ubiquitous nature of AI, this 

inventorship inquiry could include 

questions about whether and how AI is 

being used in the invention creation 

process. In making inventorship 

determinations, it is appropriate to 

assess whether the contributions made 

by natural persons rise to the level of 

inventorship as discussed in section IV 

above. 

C. Naming the Inventors 

35 U.S.C. 115 requires that an 

application filed under 35 U.S.C. 111(a) 

shall include the name of the inventor 

or each joint inventor.75 As provided in 

37 CFR 1.41(b), an applicant may name 

the inventorship for a non-provisional 

application under 35 U.S.C. 111(a) in 

the application data sheet in accordance 

with 37 CFR 1.76, or in the inventor’s 

oath or declaration in accordance with 

37 CFR 1.63.76 Once the inventorship 

has been established in an application, 

a correction of inventorship must be 

made pursuant to 37 CFR 1.48(a). After 

the patent has issued, a correction of 

inventorship must be made according to 

37 CFR 1.324 or by reissue.77

In situations in which it is determined 

that contributions by a named inventor 

to the claimed subject matter do not rise 

to the level of inventorship, 

inventorship should be corrected in 

accordance with 37 CFR 1.48 or 1.324. 

Although 37 CFR 1.48 does not contain 

a diligence requirement for filing the 

request, once an inventorship error is 

discovered, timeliness requirements 

under 37 CFR 1.116 and 1.312 apply.78

Correction of inventorship may also be 

obtained without the need for filing a 

request under 37 CFR 1.48 by the filing 

of a continuing application under 37 

CFR 1.53 and subsequently abandoning 

the parent application.79

In situations in which inventorship 

with respect to a particular claim cannot 

be corrected (i.e., no natural person 

significantly contributed to the claimed 

invention), the claim must be canceled 

or amended. Parties under §§ 1.56(c) 

and 1.555(a) who become aware of 

material information on inventorship 

should submit the information as early 

as possible in prosecution and not wait 

until after allowance.80 Applicants 

should continue to ensure that the 

proper inventors are listed as 

prosecution progresses (e.g., due to 

amendments to claims).81

D. Requirements for Information 

Patent examiners and other USPTO 

employees have the ability to require 

the submission of information that may 

be reasonably necessary to properly 

examine or treat a matter in a pending 

or abandoned application, in a patent, 

or in a reexamination proceeding.82 The 

information that must be submitted to 

comply with a requirement for 

information under 37 CFR 1.105 may 

not necessarily be material to 

patentability in itself under 37 CFR 

1.56, but is reasonably necessary to 

obtain a complete record from which a 

determination of patentability can be 

made.83 In other words, the threshold 

for requiring information under 37 CFR 

1.105 is substantially lower than the 

threshold for disclosing information 

under 37 CFR 1.56. Therefore, when an 

examiner or other USPTO employee has 

a reasonable basis to conclude that an 

individual identified under 37 CFR 

1.56(c) or 37 CFR 1.555(a) or any 

assignee has information reasonably 

necessary to the examination of the 

application or treatment of some matter, 

the examiner or other USPTO employee 

may require the submission of 

information that is not necessarily 

material to patentability.84 This would 

apply in the context of applications or 

patents for AI-assisted inventions such 

that if an examiner or other USPTO 

employee has a reasonable basis to 

conclude that one or more named 

inventors may not have contributed 

significantly to the claimed subject 

matter, the examiner or other USPTO 

employee may request information from 

the applicant regarding inventorship 

even if the information is not material 

to patentability.85

E. Inventor’s Oath or Declaration 

There is no change in oath or 

declaration practice for the named 

inventors in a patent application. Those 

named inventors must execute an oath 

or declaration unless a substitute 

statement is submitted on their behalf.86

As explained in section III above, only 

a natural person(s) can be listed as the 

inventor or joint inventors. Therefore, 

no oath, declaration, or substitute 


lotter on DSK11XQN23PROD with NOTICES1
Federal Register / Vol. 89, No. 30 / Tuesday, February 13, 2024 / Notices 10051 

87 37 CFR 1.42(a). 

88See 37 CFR 3.73(a); see also MPEP 301(I). 

89See Beech Aircraft, 990 F.2d at 1248 (‘‘At the 

heart of any ownership analysis lies the question of 

who first invented the subject matter at issue, 

because the patent right initially vests in the 

inventor who may then, barring any restrictions to 

the contrary, transfer that right to another, and so 

forth.’’). 

90See MPEP 301. 

91See MPEP 301 (subsection II). 

92See MPEP 301 (subsections II and V). 

93See MPEP 213.02 (subsection II), 211.01, 1895, 

2920.05(e). 

94See 37 CFR 1.76; MPEP 1893.01(e). 

statement should be filed on behalf of 

an AI system, even if the AI system 

made contributions to one or more 

claims in a patent application. 

F. Applicant and Ownership 

The word ‘‘applicant,’’ when used in 

37 CFR, refers to the inventor or all joint 

inventors, or to the person applying for 

a patent as provided in 37 CFR 1.43, 

1.45, or 1.46.87 The original applicant is 

presumed to be the owner of the patent 

application unless there is an 

assignment.88 As the ownership of a 

patent or application for a patent 

initially vests in the named inventors 89

and is thereafter transferrable through 

assignments, there is no change in 

practice for AI-assisted inventions with 

regard to the applicant or assignment of 

ownership rights.90 The named inventor 

or joint inventors may seek patent rights 

as the applicant under § 1.45. 

Alternatively, the named inventor or 

joint inventors may assign their 

ownership rights to an assignee (e.g., 

employer, owner or developer of the AI 

system, or other appropriate party), who 

may then file a patent application under 

§ 1.46 or take action in a patent matter 

under § 3.73. 

‘‘Assignment,’’ in general, is the act of 

transferring to another the ownership of 

one’s property, i.e., the interest and 

rights to the property.91 Because an AI 

system cannot be a named inventor, it 

has no rights to assign; therefore, 

assignments from AI systems should not 

be recorded with the USPTO. This 

guidance only applies to recording the 

assignments and other documents 

related to interests in patent 

applications and patents in the USPTO 

and does not apply to contractual or 

licensing agreements between parties 

owning and using AI systems in the 

invention creation process. Applicants 

should keep in mind that the recording 

of assignments and other related 

documents by the USPTO is a 

ministerial act, and assignments and 

other related documents are contracts 

that are governed by the relevant 

jurisdictional law.92

G. Benefit/Priority Claims to Prior-Filed 

Applications 

Applications and patents claiming the 

benefit of, or priority to, a prior 

application filed in the United States or 

a foreign country under 35 U.S.C. 119, 

120, 121, 365, or 386 must name the 

same inventor or have at least one joint 

inventor in common with the prior-filed 

application.93 For all applications and 

patents, including those that cover AIassisted inventions, the prior-filed 

application and the United States 

application or patent claiming the 

benefit of, or priority to, the prior-filed 

application must name the same natural 

person as the inventor, or have at least 

one joint inventor who is a natural 

person in common. Therefore, a priority 

claim to a foreign application that 

names an AI system as the sole inventor 

will not be accepted. This policy also 

applies to U.S. patent applications and 

patents claiming priority to foreign 

applications that allow the naming of 

non-natural persons as joint inventors. 

For a U.S. application claiming priority 

to a foreign application that names both 

a natural person(s) and a non-natural 

person as a joint inventor, the 

application data sheet accompanying 

the application filed in the United 

States must list as inventor(s) only the 

natural person(s) who significantly 

contributed to the invention, including 

one in common with the foreign 

application. Similarly, for an 

application entering the national stage 

under 35 U.S.C. 371 where the 

international application indicates a 

joint inventor that is not a natural 

person, applicants can comply with the 

U.S. inventorship requirement by 

naming the natural person(s) who 

significantly contributed to the 

invention in an application data sheet 

accompanying the initial submission 

under 35 U.S.C. 371.94

Katherine Kelly Vidal, 

Under Secretary of Commerce for Intellectual 

Property and Director of the United States 

Patent and Trademark Office. 

[FR Doc. 2024–02623 Filed 2–12–24; 8:45 am] 

BILLING CODE 3510–16–P 

COMMODITY FUTURES TRADING 

COMMISSION 

Sunshine Act Meetings 

TIME AND DATE: 12:30 p.m. EST, 

Thursday, February 15, 2024. 

PLACE: CFTC Headquarters Conference 

Center, Three Lafayette Centre, 1155 

21st Street NW, Washington, DC. 

STATUS: Open. 

MATTERS TO BE CONSIDERED: The 

Commodity Futures Trading 

Commission (‘‘Commission’’ or 

‘‘CFTC’’) will hold this meeting to 

consider the following matters: 

• Proposed Rule: Requirements for 

Designated Contract Markets and Swap 

Execution Facilities Regarding 

Governance and the Mitigation of 

Conflicts of Interest Impacting Market 

Regulation Functions; 

• Proposed Rule: Foreign Boards of 

Trade; 

• Proposed Rule: Regulations to 

Address Margin Adequacy and to 

Account for the Treatment of Separate 

Accounts by Futures Commission 

Merchants; 

• Application of Taiwan Futures 

Exchange Corporation for an Exemption 

from Registration as a DCO; and 

• ICE NGX Petition for Amended 

DCO Registration Order. 

The agenda for this meeting will be 

available to the public and posted on 

the Commission’s website at https://

www.cftc.gov. Members of the public are 

free to attend the meeting in person, or 

have the option to listen by phone or 

view a live stream. Instructions for 

listening to the meeting by phone and 

connecting to the live video stream will 

be posted on the Commission’s website. 

In the event that the time, date, or 

place of this meeting changes, an 

announcement of the change, along with 

the new time, date, or place of the 

meeting, will be posted on the 

Commission’s website. 

CONTACT PERSON FOR MORE INFORMATION: 

Christopher Kirkpatrick, Secretary of the 

Commission, 202–418–5964. 

(Authority: 5 U.S.C. 552b) 

Dated: February 8, 2024. 

Christopher Kirkpatrick, 

Secretary of the Commission. 

[FR Doc. 2024–02997 Filed 2–9–24; 11:15 am] 

BILLING CODE 6351–01–P 

CONSUMER PRODUCT SAFETY 

COMMISSION 

[Docket No. CPSC–2010–0046] 

Agency Information Collection 

Activities; Extension and Revision of 

Collection; Consumer Focus Groups 

and Other Qualitative Studies 

AGENCY: Consumer Product Safety 

Commission. 

ACTION: Notice of information collection; 

request for comment. 


lotter on DSK11XQN23PROD with NOTICES1