The United States Patent Office has issued Guidelines on AI Assisted
Inventions. The press release concerning
the guidelines provides:
To incentivize, protect, and encourage investment in
innovations made possible through the use of artificial intelligence (AI), and
to provide the clarity to the public and United States Patent and Trademark
Office (USPTO) employees on the patentability of AI-assisted inventions, the
USPTO has published guidance in the Federal Register. This guidance delivers on the
USPTO’s obligations under the Executive Order on the Safe, Secure, and Trustworthy
Development and Use of Artificial Intelligence.
“The patent system was developed to incentivize and protect
human ingenuity and the investments needed to translate that ingenuity into
marketable products and solutions,” said Kathi Vidal, Under Secretary of
Commerce for Intellectual Property and Director of the USPTO. “The patent
system also incentivizes the sharing of ideas and solutions so that others may
build on them. The guidance strikes a balance between awarding patent
protection to promote human ingenuity and investment for AI-assisted inventions
while not unnecessarily locking up innovation for future developments. The
guidance does that by embracing the use of AI in innovation and focusing on the
human contribution.”
The guidance, which goes into effect February 13, makes clear
that AI-assisted inventions are not categorically unpatentable. The guidance
provides instructions to examiners and stakeholders on how to determine whether the human contribution to an
innovation is significant enough to qualify for a patent when AI also
contributed. It builds on the existing inventorship framework by
providing instructions to examiners and applicants on determining the correct
inventor(s) to be named in a patent or patent application for inventions
created by humans with the assistance of one or more AI systems. It states that
patent protection may be sought for inventions in which a human provided a
significant contribution to the invention.
Additionally, in order to further assist our examiners and
applicants in their understanding of this guidance, examples of hypothetical
situations of how the guidance would apply are available on our AI-related resources webpage.
To learn more about what the guidance is and is not, and to
get your questions answered and provide feedback, we invite you to attend our
upcoming public webinar on March 5 from 1-2 p.m. ET. We
also invite you to read the Director’s Blog on AI and inventorship guidance: Incentivizing human ingenuity
and investment in AI-assisted inventions.
The full text of the inventorship guidance for AI-assisted
inventions and the corresponding examples are available on our AI-related resources webpage. The USPTO will accept
public comments on the inventorship guidance and the examples until May 13,
2024. Please see the Federal Register Notice for instructions on submitting
comments.
The Guidelines provide a nonexhaustive list of principles to
use when analyzing ai-assisted inventorship:
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
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.
Additionally, the guidelines, related to the duty of candor
and reasonable inquiry, state:
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.