In response to the rapidly evolving landscape of innovation and the integration of artificial intelligence (AI) into creative processes, the United States Patent and Trademark Office (USPTO) issued guidance effective February 13, 2024. This guidance aims to address the complexities associated with inventorship in AI-assisted inventions, including those covered by design and plant patents. The guidance has an open comment period, ending May 13^th, 2024. If you would like an opportunity to submit a comment, you can do so here.

The guidance underscores a critical legal requirement: inventors named on US patents must be natural persons. While recognizing the capabilities of AI systems in performing tasks akin to human inventorship, the guidance adheres to clear statutory language that explicitly prohibits the listing of AI as an inventor. This stance has been supported by the Federal circuit in Thaler v. Vidal. Only allowing human inventors highlights the need for a distinct categorization in patent applications, acknowledging the unique roles of humans and AI entities. This has already been done by the copyright office, and Sunstein has written about that topic here.

Contrary to initial concerns surrounding AI-assisted inventions, the guidance asserts that they are not inherently unpatentable due to improper inventorship. Acknowledging the collaborative nature of innovation, the guidance emphasizes that individuals utilizing AI in the inventive process are not disqualified from being considered inventors. However, a nuanced requirement emerges: these individuals must contribute something beyond the autonomous output of the AI system. This approach aligns with the USPTO's broader policy to incentivize and prioritize human-centered contributions, ensuring that patents reflect meaningful human involvement.

Moving forward, the guidance delves into the intricacies of naming inventors for AI-assisted inventions. It requires that an inventor must make a substantial contribution to each claim in the patent. For individuals using AI systems, this could entail contributing to an independent claim to satisfy the requirement. Importantly, the guidance explicitly clarifies that maintaining 'intellectual domination' over an AI system, without tangible human contributions, does not confer inventorship. This clarification underscores the USPTO's commitment to recognizing and rewarding only genuine human creativity and input.

The guidance also introduces a duty to disclose information about AI systems contributing to inventions. This duty arises from the understanding that such information may provide critical insights into inventorship, thereby influencing the overall patentability of the invention. This disclosure requirement demonstrates the USPTO's commitment to inventor transparency and thorough patent examination, ensuring that the collaborative nature of AI-assisted innovations is appropriately considered in the patent application process.

In conclusion, the USPTO's guidance on AI-assisted inventions represents a significant milestone in patent law. By recognizing the roles of both humans and AI entities in the inventive process, the guidance seeks to strike a delicate balance that encourages innovation while upholding the integrity of the patent system. As the guidance guides us into the future, it serves as a pivotal framework, shaping the contours of inventorship in an era marked by unprecedented collaboration between humans and machines.

* Article image was created by the author using AI