AI & Patents: USPTO Issues Guidance

As Artificial Intelligence (AI) continues to develop, it is increasingly being used to aid in developing new products and processes. As currently drafted, U.S. patent law limits the grant of patents to natural persons. Courts have ruled that AI systems cannot receive patents for fully AI-generated inventions. However, it has been unclear whether, and under what conditions, patents can be granted on AI-assisted inventions.

The U.S. Patent and Trademark Office has issued new guidelines clarifying when it will grant patents for inventions created with the aid of AI. The new guidance provides that patents can be granted for AI-assisted inventions for which a natural person provided a significant contribution.

The new guidelines recognize that determining whether a natural person’s contribution to AI-assisted inventions is significant may be difficult to ascertain, and there is no bright-line test. The U.S. Patent and Trademark Office provides the following non-exhaustive list of principles that can help inform whether a natural person has sufficiently contributed to an AI-assisted invention to be named an inventor:

1. A natural person’s use of an AI system in creating an invention does not negate the person’s contributions as an inventor. The natural person can be listed as the inventor if the natural person contributes significantly to the AI-assisted invention. The guidelines do not require that a natural person make a full conception; however, the natural person needs to make a significant contribution. The U.S. Patent Office guidelines suggest that the AI system might even contribute more to the inventive concept than the natural person, so long as the natural person makes a significant contribution. As always with the issue of inventorship, one should exercise care when claim drafting to ensure the claims encompass the natural person’s contribution, not just the AI system’s contribution.
2. Merely recognizing a problem or having a general goal or research plan to pursue does not rise to the level of conception. A natural person who only presents a problem to an AI system may not be a proper inventor. However, a significant contribution could be shown by how the person constructs the prompt in view of a specific problem to elicit a particular solution from the AI system.
3. 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. However, a person who takes an AI system's output and contributes significantly 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.
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.  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. Therefore, a person simply owning or overseeing an AI system that is used in creating an invention, without providing a significant contribution to the conception of the invention, does not make that person an inventor.

As explained by Kathi Vidal, Under Secretary of Commerce for Intellectual Property and Director of the US Patent Office, “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 went into effect February 13 and applies to pending and future applications, makes clear that AI-assisted inventions are not categorically unpatentable. The guidance provides instructions on how to determine whether the human contribution to an innovation is significant enough to qualify for a patent when AI also contributed. The US Patent and Trademark Office will produce training materials and conduct a webinar to explain the new guidelines in more detail.