Inventorship guidance for AI-assisted inventions published by the USPTO

On 12 February 2024, the United States Patent and Trademark Office (USPTO) announced with a press release the publication of its Inventorship Guidance for AI-Assisted Inventions (Guidance). The Guidance has been published and will be effective from 13 February 2024.

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. The guidance embraces the use of AI in innovation and provides that AI-assisted inventions are not categorically unpatentable. The guidance instructs examiners on how to determine 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”.

 AI cat

The content

Here is the (non-exhaustive) list of principles for determining whether a natural person’s contribution in AI-assisted inventions is significant:

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;
2.       The natural person can be listed as the inventor or joint inventor if the natural person contributes significantly to the AI-assisted invention;
3.       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;
4.       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;
5.       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;
6.       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;
7.       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;

8.       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.

The guidance further examines the relevance of the so called Pannu test (Pannu v. Iolab Corp.) in determining inventorship in the context of AI-assisted inventions, namely: a) contribution by the inventor in some significant manner to the conception of the invention; 2) contribution by the inventor to the claimed invention that is not insignificant in quality, when that contribution is measured against the dimension of the full invention, 3) more than merely explanation to the real inventors well-known concepts and/or the current state of the art.

Lastly, the Guidance contains some specific examples of hypothetical situations and how it would apply there to further assist examiners and applicants.

The USPTO has organized a public webinar on 5 March 2024 from 1-2 p.m. ET and is seeking public comments (with 11 questions) on the Guidance with a deadline of 13 May 2024. Comments shall be provided through the Federal eRulemaking Portal here.

Fresh comment

From a first reading, the Guidance appears to be in line with the US Dabus decision, while there is lack of the requirement for the applicant of an AI-assisted invention to disclose to the USPTO that AI was used as part of the inventive process, as instead requested by the US Copyright Office (USCO) for the registration of works whose creation implies AI, see The IPKat here.  It will then be interesting to see reactions to this newly published Guidance as well as to the public comments.

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