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This article highlights the essential aspects of recent guidelines issued by the United States Patent and Trademark Office (USPTO) on inventions assisted by artificial intelligence (AI). As background, the United States courts finally determined in a series of decision in Thaler v. Vidal that concluded in 2023 that inventors must be natural persons based on unambiguous use of the term “individual” throughout the US Patent Act.
On February 13, 2024, the USPTO introduced new guidelines aimed at clarifying the patentability criteria for inventions facilitated by AI. The guidelines acknowledge the role AI systems can play in developing inventions but, in line with the Thaler decision, restrict inventor status to humans.
The guidelines applies both retroactively and prospectively, covering all US patent applications and patents filed before, on and after February 13, 2024.
AI Assisted Inventions are not Categorically Unpatentable
The USPTO guidelines has explicitly state that the involvement of an AI system in the development of an invention does not disqualify other individuals from being recognized as inventors or co-inventors if they significantly contributed to the invention's creation.
Naming Inventors for AI-Assisted Inventions
Critically, the guideline provides three instances where a natural person using an AI system has no significant contribution does not qualify as an inventor:
- Mere implementation of an invention does not qualify as a significant contribution.
- Simply identifying a problem or setting a broad objective or research strategy does not qualify as the conception of an invention.
- Finally, the guidance states that merely having "intellectual control" (ownership or supervision) over an AI system does not automatically grant someone inventor status for inventions produced using the AI system.
The guidelines affirm that a natural person who creates a crucial component of the claimed invention can be regarded as an inventor even if they were not involved in or present for every step that resulted in the invention's conception. This remains true for AI assisted inventions.
Additionally, a person who designs, develops, or trains an AI system to address a particular problem and elicit a specific solution could be recognized as an inventor if such activities are deemed a significant contribution to the claimed invention.
AI System Cannot Assign Rights
The guidelines clarify that since an AI system will not be recognised as an inventor, such systems have no rights to assign with respect to an invention. Hence, an assignment purporting to assign such rights from an AI system will be considerd invalid and will not be recorded by the USPTO.
Priority Claims to Prior Filed Applications
Finally, the guidelines affirm that all patent applications that claim priority from the filing date for an earlier application in another jurisdiction must list the same natural person(s) as the inventor(s) or share at least one joint inventor who is a natural person.
As a result, any priority claim linked to a foreign application that identifies an AI system as the sole inventor will be refused and such a refusal may lead to the refusal of the patent sought in the US for lack of novelty.