Employee invention and artificial intelligence

Protectability of employee inventions in connection with artificial intelligence

The protectability of employee inventions in connection with artificial intelligence (AI) presents a new legal challenge, particularly concerning the question of whether inventions generated using AI can be legally protected. Specific delimitation issues arise especially in connection with employee inventions.

Employee invention

Employee inventions are regulated in §§ 6-17 of the Austrian Patent Act (PatG). Pursuant to § 7 (3) PatG, a employee invention exists if its nature falls within the company’s field of work and if either the activity that led to the invention is part of the employee’s official duties or if the employee received the inspiration for the invention through their work in the company.

Patentability of AI-generated inventions

According to § 1 (1) PatG, the patentability of a technical invention requires that it is new, not obvious to a person skilled in the art from the state of the art and is industrially applicable.

AI-generated inventions present particular challenges in this regard:

1. Novelty: An invention is considered new if is not part of the state of the art (Art. 54 (1) EPC; § 3 (1) sentence 1 PatG). The state of the art includes everything that has been made available to the public before the priority date of the application by written or oral description, by use or in any other way (Art 54 (2) EPC; § 3 (1) sentence 2 PatG). The question of novelty of an AI-generated invention may raise problems if publicly available AI-systems have been used as AI may rely on data and knowledge that is already publicly available and thus part of the state of the art.

2. Inventive step: An inventive step exists if the innovation is not obvious to the person skilled in the art from the state of the art (Art 56 sentence 1 EPC; § 1 (1) PatG). However, an inventive step is not already lacking if the skilled person could have arrived at the invention on the basis of the prior art, but only if he would have actually proposed the invention based on a sufficient cause in the expectation of an improvement or an advantage.

Traditionally, the technical knowledge of an average skilled person was based on textbooks and reference works, under the assumption that a skilled person would obtain information on technical challenges from relevant literature (Wege, KI, Sprachmodelle & Patentrecht aus Unternehmenssicht, InTeR 2024, 100). However, AI-models now enable significantly simplified access to information, making technical solutions much easier to find. This development could significantly raise the threshold for an inventive step (Wege, KI, Sprachmodelle & Patentrecht aus Unternehmenssicht, InTeR 2024, 100).

3. Industrial applicability: This criterion is generally less problematic for AI-generated inventions.

Inventorship for AI-generated inventions

According to § 4 PatG, only the inventor or his legal successor is entitled to the grant of a patent. The prevailing opinion holds that only natural persons can be considered inventors (see also the recent decision of the Federal Court of Justice 11.06.2024, X ZB 5/22, GRUR 2024, 1315 [Gärtner]). The legal basis for this can be found in § 6 (1) PatG, which expressly requires a natural person to be the inventor. This leads to the following consequences:

1. AI-systems themselves cannot be recognized or named as inventors.

2. Inventions created completely autonomously by AI without any involvement of a natural person are not eligible for patent protection.

3. For inventions resulting from a collaboration between humans and AI, the human contribution is decisive. If the human contribution is only subordinate, inventorship is not granted.

Assessment of the human contribution

Whether the human contribution is sufficient to establish a human inventorship and thus a patentable invention must be assessed on a case-by-case basis. It is not solely the employer’s task or the mere use of an AI-tool that is decisive for the recognition of an employee invention, but rather the employee’s personal, creative contribution to the invention (§ 7 (1) PatG).

For the recognition of a protectable employee invention, the human contribution must constitute a significant part of the creative achievement (Lampe in Handbuch Multimedia-Recht, ⁵⁷, Schutz vor KI-Erzeugnissen, Rz 33). The decisive factor in this assessment is the degree of creative leeway that the employee had when inputting data and using AI-algorithms (Dornis, Die “Schöpfung ohne Schöpfer” – Klarstellung zur “KI-Autonomie” im Urheber- und Patentrecht, GRUR 2021, 791). The employer’s guidelines and the employee’s autonomy in the research process play a crucial role in this evaluation.

However, it is not sufficient for the employer to merely formulate the task. Rather, the employee must contribute a recognizable cognitive step towards solving the technical problem (Mayr, Vergütung für Erfindungen von Dienstnehmern – Kommentar zu den §§ 6 bis 20 und 28 Patentgesetz 1970). For the legal assessment of inventions in the context of AI, additional criteria may be considered, such as the specificity of the inputs (prompts), the predictability of the output and the type of post-processing by humans.

Recommendations for employee inventions

Companies and inventors who use AI-systems for innovations should carefully document how AI was used and what specific contributions were made to the invention in order to record the inventive activity of their own employees.

If a patentable invention is created by an employee with the assistance of AI, the provisions of the PatG on employee inventions apply. Pursuant to § 12 PatG, the employee is obligated to notify the employer of the invention without delay. The employer then has the right to claim the employee invention for himself within four months of this notification (§ 6 (2) PatG).

Conclusion

The protectability of employee inventions in connection with AI therefore primarily depends on the extent to which the human contribution of the employee can be regarded as essential for the creation of the invention. A careful case-by-case assessment is necessary to determine whether the requirements for a patentable employee invention are met. Companies should establish clear guidelines for the use of AI-systems when developing inventions in order to safeguard potential patent claims.