USPTO Issues Inventorship Guidance For AI-Assisted Inventions - AI-Assisted Inventions Are Not Categorically Unpatentable

• Published date: 08 March 2024
• Subject Matter: Intellectual Property, Technology, Patent, New Technology
• Law Firm: Lowenstein Sandler
• Author: Ms Audrey G. Ogurchak and Beverly J. Lamberson

On February 13, the United States Patent and Trademark Office (USPTO) issued inventorship guidance, effective immediately, for inventions created with the assistance of artificial intelligence (AI). The guidance addresses questions and provides insight relating to the patentability of AI-assisted inventions, inventorship for AI-assisted inventions, and duties owed to the USPTO by individuals associated with filing and prosecuting patent applications covering AI-assisted inventions. The guidance applies to utility, design, and plant patents and patent applications. The following includes key takeaways from the USPTO guidance, a brief overview of what is stated by the USPTO guidance, and an overview of actions interested clients can take immediately and in the future.

Guidance Background

The guidance was issued in response to the "Executive Order on the Safe, Secure, and Trustworthy Development and Use of Artificial Intelligence" issued by President Biden on October 30, 2023,¹ and provides guidance to patent examiners and applicants on patent eligibility to address innovation using AI, based on public feedback received by the USPTO and in view of the Federal Circuit's holdings in Thaler v. Vidal, 43 F.4th 1207 (Fed. Cir. 2022)², cert. denied, 143 S. Ct. 1782 (2023).

Inventorship Standard and Significant Contribution by a Natural Person

The guidance outlines the statutory and judicial framework for establishing inventorship in a patent application or a patent, and builds on the existing inventorship framework and the "significant contribution test" from Pannu v. Iolab Corp., 155 F.3d 1344 (Fed. Cir. 1998).³ The key question considered by the guidance is not whether the contributions of an AI system to an invention would rise to the same level of inventorship if those contributions were made by a natural person, but instead whether the natural person named on a patent made a significant enough contribution to be named as an inventor.

According to the guidance, determination of whether natural persons significantly contributed to an AI-assisted invention is made on a claim-by-claim basis, where each claim in the patent or patent application must have resulted from a significant contribution by at least one natural person.

Guiding Principles

While there is no bright-line test to ascertain whether a natural person's contribution to an AI-assisted invention is considered significant, the guidance has provided the following non-exhaustive list of principles that can help inform the determination:

1. The use of an AI system does not categorically negate the person's contributions as an inventor.
2. Simply restating a recognized problem or goal in a prompt submitted to an AI system does not rise to the level of a significant...