The US Patent and Trademark Office (USPTO) has released comprehensive guidance on inventorship for artificial intelligence (AI)-assisted inventions. This guidance, instigated by the executive order Safe, Secure, and Trustworthy Development and Use of Artificial Intelligence from October 2023, establishes clear criteria for determining human contributions to AI-assisted inventions, emphasizing the essential role of natural persons in the patent process.
Key Developments
- Centrality of human contribution: The USPTO's guidance highlights that AI-assisted inventions are patentable when there is “significant” human involvement to the “contribution to the invention.” The criteria for inventorship focuses on natural persons' contributions, underscoring the role patents have in promoting human innovation.
- Criteria for determining human contributions:
- Substantial contribution to conception: Each inventor must significantly contribute to the conception of the invention. Mere ownership of an AI system or overseeing its operation or mere implementation or reduction to practice does not qualify as a significant contribution, which is consistent with existing case law in the United States.
- Contribution to every claim: A natural person must contribute significantly to every claim in the patent application or patent. It's insufficient for a human to merely build or use an invention conceived by AI.
- Definite and permanent idea: The contribution must relate to the final idea of the complete invention as applied in practice.
- Significant role in prompt construction: If a human constructs the AI's prompt in a way that elicits a specific solution to a problem, this may constitute a significant contribution.
- Development, training, or building of an AI system: In some cases, designing, developing, or training the AI system to address a specific problem can qualify as a significant contribution.
- Adherence to legal standards for inventorship: The guidance is in line with legal precedents in the United States and most international jurisdictions, emphasizing that AI systems cannot be named as inventors. The emphasis is on the contributions of natural persons to the conception of the inventive process.
- Impact on patent practice: The guidance affects various aspects of patent practice, including disclosure duties, inventorship correction, and benefit/priority claims in patents.
- Public comments and future updates: The USPTO encourages public input on this guidance to refine its approach as AI technology and legal standards evolve.
- Effective date and applicability: The guidance takes effect upon its publication in the Federal Register and applies to all relevant applications regardless of their filing date.
Strategic Considerations for Businesses and Legal Professionals
Businesses and legal professionals should endeavor to meticulously evaluate the human involvement in AI-assisted inventions to ensure compliance with USPTO guidance. While this guidance addresses AI-assisted inventions, aspects of the guidance may be applicable to various types of software-related inventions. Keeping abreast of evolving guidelines in this rapidly advancing field of AI is critical, and it is vital to document the nature and extent of human contributions during the patent application process.