IP and Gen AI Technologies: Essential Guidance for In-House Counsel

The proliferation of generative artificial intelligence (AI) technology has taken most of the oxygen out of the room in corporate offices. Virtually every major company has aggressively investigated how they can either develop Gen AI tools, implement Gen AI tools and/or protect themselves from the impact of commercially available Gen AI tools.

For in-house counsel, the challenges are especially acute. Their organizations want to leverage Gen AI technologies, but they face important challenges related to managing intellectual property (IP) risks. These include a new legal landscape that is being created daily by Gen AI involving patents, copyrights, licensing and trade secrets.

“While artificial intelligence systems have existed for decades, recent systems — such as ChatGPT, Stable Diffusion, Claude, Gemini and Grok — have brought AI applications and their implications into public view,” reported Law360. “Regulatory capture, deepfakes, algorithm bias and black box decision making are just a few of the problems posed by AI today that are bubbling to the surface. Foundationally, questions remain as to the ownership of content created using AI.”

In-house counsel will be expected to lead the charge for their organizations when it comes to navigating this rapidly evolving framework around Gen AI and IP law.

USPTO Guidance on AI-Assisted Inventions: Key Takeaways for Patent Protection

LexisNexis had the opportunity to cover some of these important issues in a recent two-part LexisNexis webinar series, “AI/IP Issues,” in which we explored emerging challenges with protecting patent portfolios and managing licensing provisions (Part 1) as well as a review of current patent litigation and a forecast of where these litigation trends may be headed (Part 2).

One of the important subjects that we addressed is the guidance issued by the U.S. Patent and Trademark Office (USPTO) earlier this year on patents for inventions developed using AI, which makes it clear that “help from the technology does not foreclose getting a patent, but sets standards that will spur litigation and create new obligations for attorneys,” according to Ryan Davis  of Law360.

Some of that key guidance from the USPTO includes:

• Patents on AI-assisted inventions are allowed

AI-assisted inventions are able to be patented, although the USPTO warns that the “inventorship analysis” should focus on human contributions since patents are intended to function to incentivize and reward human ingenuity. The guidance clearly indicates that AI can be used as a tool, just like any other tool that might be used in a new invention.

• Every claim needs a human contribution

The standard that must be met is that humans must contribute to every claim in a patent and that “inventorship is improper” if a patent application includes a claim in which at least one natural person did not significantly contribute to the claimed invention. This requirement will be a central focus for in-house counsel going forward. It will be important to identify a human contribution to every element in order to mitigate the risk of a patent being rejected because a single claim was invented solely by AI.

• Patent teams must probe how AI is used

The guidance makes it clear that everyone associated with the submission of a patent application has an obligation to conduct their own reasonable inquiries to ensure the information on the application is correct and to disclose any relevant information about how AI was used in the invention process. In-house counsel will need to collect information from their colleagues about whether and how they used AI and, where necessary, obtain detailed records that illustrate the significance of human contributions to the invention.

• Prepare for disputes about human contribution test

The USPTO provides hypothetical scenarios in which AI was used in an invention process and what each one might contribute to the ability to secure a patent. These scenarios spell out that simply making or using an invention suggested by AI does not amount to a significant human contribution, but overall the “significant contribution” test is still a fairly vague standard. This is likely to lead to real-world disputes in the patent office and the courts as we proceed.

View our LexisNexis "AI/IP Issues" webinar on-demand.

Essential AI and IP Resources for In-House Legal Counsel

The Practical Guidance team for LexisNexis has developed a number of valuable resources to give in-house counsel information and tools to lead the charge for their organizations in managing IP risks associated with the proliferation of Gen AI technology. These resources include:

• Generative Artificial Intelligence Resource Kit, which aggregates a breadth of practice notes, checklists and templates that are organized by area of practice and updated regularly with new developments;
• Artificial Intelligence: Intellectual Property Regulatory Tracker, which highlights recent guidance, decisions and actions taken by the U.S. Patent and Trademark Office and U.S. Copyright Office related to AI; and
• Copyright Registration of AI-Generated Works Checklist, which outlines key considerations that attorneys should review when advising whether and how to copyright AI-generated works in the U.S.

All of this information is accessible to in-house legal teams from Lexis+® General Counsel Suite, which provides a vast collection of legal resources, breaking business and legal news, and Practical Guidance content.

Click here for more information about Lexis+ GC Suite or to register for a free 7-day trial.