New USPTO Guidelines On AI-Assisted Inventions Leave Many Questions Unanswered

• Published date: 11 March 2024
• Subject Matter: Technology, New Technology
• Law Firm: K&L Gates
• Author: George C. Summerfield and Christopher J. Valente

The US Patent and Trademark Office (USPTO) recently issued what it labeled as Inventorship Guidance for AI-Assisted Inventions [Docket No. PTO-P-2023-0043].¹ Despite its name, the document provides little in the way of certainty that one could not garner from reviewing recent precedent addressing the issue of artificial intelligence (AI) inventions. To begin with, the USPTO warns that its "guidance does not constitute substantive rulemaking and does not have the force and effect of law."² Rather, "[t]he guidance sets out agency policy with respect to the USPTO's interpretation of the inventorship requirements of the Patent Act in view of" controlling jurisprudence, but "[r]ejections will continue to be based on the substantive law, and it is those rejections that are appealable to the PTAB and the courts."³ Adding to the confusion attendant to the actual purpose thereof, the guidelines admonish that, "[t]o the extent that earlier guidance from the USPTO, including certain sections of the Manual of Patent Examining Procedure is inconsistent with the guidance set forth" in such guidelines, "USPTO personnel are to follow these guidelines," and "[t]he MPEP will be updated in due course."⁴

Putting aside whether this type of instruction to the patent examining corps constitutes rulemaking, it is clear that the USPTO intends these guidelines to be more than mere travelogue through recent decisions on the proper role of AI in patentable inventions. That said, it is worth noting the caselaw that the USPTO elected to address in the context of the policy underlying the US patent system, which "is designed to encourage human ingenuity."⁵ The following is a synopsis of the more salient caselaw discussed in the guidelines:⁶

Thaler v. Vidal held "that only a natural person can be an inventor, so AI cannot be," given the common meaning of "individual" in the statutory definition of "inventor";⁷

University of Utah v. Max-Planck-Gesellschaft Zur Forderung Der Wissenschaften E.V. held that, to perform the mental act of conception, which is the touchstone of inventorship, "inventors must be natural persons";⁸ and

Pannu v. Iolab Corp. held that, to be an "inventor," an individual must have contributed "in some significant manner" to the claimed invention, with the putative significant nature of the contribution being informed by several factors identified by the court.⁹

In light of the foregoing (and other) decisions, the USPTO recognized that AI-assisted inventions are...