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USPTO Issues Guidance on AI-Assisted Inventions: Human Contribution Key to Patent Eligibility

By  |  February 12, 2024
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Law360 reports that the US Patent and Trademark Office (USPTO) has issued guidance on determining patent eligibility for inventions developed with artificial intelligence (AI), stating that a human must have made a “significant contribution.”

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    In a move to address the increasing role of AI in innovation, the USPTO released guidance on Monday to clarify how it will assess patent eligibility for inventions involving AI assistance. According to Law360, the guidance aims to offer clarity to both patent applicants and USPTO employees.

    The notice, scheduled for publication in the Federal Register on Tuesday, underscores that while AI-assisted inventions are not automatically ineligible for patents, the focus of inventorship analysis should prioritize human contributions. This emphasis aligns with the fundamental purpose of patents: to incentivize and reward human ingenuity, as stated in the guidance.

    USPTO Director Kathi Vidal emphasized the need to strike a balance between fostering innovation through patent protection and preventing the undue restriction of future developments. She underscored the importance of evaluating whether the human named as an inventor has made a significant enough contribution, irrespective of the involvement of AI in the invention process.

    Read more: EU Reaches ‘Milestone’ On Road To Regulating AI

    Under existing legal standards, the guidance affirms that each inventor, whether human or AI-assisted, must have made a substantial contribution to the claimed invention. The Federal Circuit’s ruling in 2022 clarified that only natural persons can be considered inventors under the Patent Act, a principle reaffirmed in the USPTO’s recent guidance.

    Despite AI’s potential to contribute to invention creation, the Patent Act mandates the naming of a natural person as the inventor. Thus, while AI’s involvement does not render an invention unpatentable, a significant human contribution remains a prerequisite for patent protection.

    The guidance outlines criteria for determining human inventorship, including the requirement for human involvement in conceiving the complete invention and contributing to every patent claim. Mere ownership or oversight of an AI system does not qualify a person as an inventor; rather, a demonstrable contribution to the invention process is essential.

    Moreover, applicants are reminded of their duty to disclose evidence if AI played a substantial role in invention-creation. Attorneys are encouraged to inquire about AI’s involvement in the invention process to ensure compliance with patent eligibility criteria.

    The USPTO will accept public comments on the guidance for 90 days, signaling a commitment to adapting to advancements in AI technology and evolving legal precedent.

    The release of these guidelines marks a significant step in addressing the intersection of AI and patent law, providing clarity to innovators navigating the complex landscape of AI-assisted inventions.

    This article is based on reporting by Law360 and edited by Daniel King.

    Source: Law 360