Mikele Bicolli
Feb 14, 2024

USPTO Issues Comprehensive Guidance on Inventorship of AI-assisted Inventions

Patent Prosecution

In a landmark move aimed at addressing the complexities arising from the intersection of artificial intelligence (AI) and patent law, the U.S. Patent and Trademark Office (USPTO) has issued detailed guidance regarding the determination of inventorship for inventions involving AI assistance. Signed by Kathi Vidal, the Under Secretary of Commerce for Intellectual Property and Director of the USPTO, the guidance is set to be published in the Federal Register on February 13, 2024.

The 27-page document represents a concerted effort by the Patent Office to grapple with the novel challenges posed by AI in the context of traditional inventorship principles. It follows extensive public engagement, including AI-specific requests for comment, listening sessions, and the directives outlined in President Joe Biden's "Executive Order on the Safe, Secure, and Trustworthy Development and Use of Artificial Intelligence."

At its core, the guidance reaffirms the fundamental principle that only natural persons—humans—can be named as inventors on patent applications. This assertion aligns with the precedent set by Thaler v. Vidal, a key case in 2022 which clarified that AI systems, despite their instrumental role in the creative process, cannot themselves be designated as inventors.

Key highlights of the guidance include:

Human-centric Inventorship: The guidance unequivocally asserts that inventorship on U.S. patents and patent applications must be limited to natural persons. Any attempts to list AI systems as inventors will be deemed improper and may lead to rejection of the application.

Significant Human Contribution: It delineates criteria for determining when a human's involvement in an AI-assisted invention warrants inventorship. Factors such as the conception of the invention, the quality of the contribution, and the degree of intellectual engagement are emphasized.

Policy Considerations: The guidance underscores the foundational role of human ingenuity in the innovation process, aligning with the constitutional mandate to promote progress in science and the useful arts. It stresses the patent system's function in incentivizing and rewarding human creativity.

Duty of Disclosure: Inventors and their representatives are reminded of their obligation to provide full and accurate information regarding the contributions of both humans and AI systems in the invention process.

Future Directions: While this guidance addresses inventorship specifically, the USPTO hints at forthcoming guidance that may delve into other aspects of patent practice impacted by AI, including subject matter eligibility and enablement.

By elucidating these principles and providing concrete examples, the USPTO aims to provide clarity and transparency in navigating the intricate terrain of AI-assisted inventions. The guidance represents a crucial step towards harmonizing patent law with the evolving landscape of technological innovation, ensuring that the patent system remains adaptive and equitable in the face of emerging challenges.

As the boundaries between human and machine creativity continue to blur, the USPTO's guidance sets a foundational framework for addressing the legal and ethical implications of AI in the realm of intellectual property. It signals a proactive stance towards fostering innovation while safeguarding the integrity of the patent system in an era of rapid technological advancement.