Promoting innovation while honoring human ingenuity
The United States Patent and Trademark Office (“USPTO”) has published a advice on inventorship for AI-assisted inventions, reflecting the growing role of artificial intelligence (“AI”) in the innovation process. This guidance provides much-needed clarity for inventors and practitioners and demonstrates the Office’s commitment to maintaining relevant examination standards in a rapidly evolving technical landscape. Those wishing to protect their AI-related innovations should carefully review the guidelines to ensure the patentability of their inventions.
The USPTO emphasizes that while AI can help develop inventions, patents will only be granted for work in which humans have made a substantial contribution. The guidelines clarify that AI systems themselves cannot be named as inventors; only natural persons can do so. This principle is rooted in the desire to encourage human ingenuity, a fundamental aspect of patent law.
The USPTO provides five guiding principles for determining whether an individual has contributed to an invention. These guidelines reflect the USPTO’s view on the Pannu factors related to being an inventor in the modern world. The guidelines generally include the following considerations:
- Significant contribution of a natural person to the AI-assisted invention, regardless of the use of the AI system.
- A natural person who contributes beyond simply recognizing a problem, for example by specifically incentivizing the AI system to achieve a particular result.
- A natural person transforming the output of an AI system to create an invention.
- A natural person who develops an essential building block from which the claimed invention is derived, such as designing, building, or training an AI system for a specific problem to achieve a particular solution.
- A natural person contributing much more than just owning or overseeing an AI system.
Notably, as we saw afterwardsAlicethe USPTO has provided a set of resources to examine AI-related inventions, including example scenarios and analyses, similar to those that have become a lifeline for practitioners navigating software-related patent protection.
The key takeaway is the importance of identifying and untangling the distinction between human contribution and the algorithm that results from or contributes to it. Qualified patent practitioners should be able to “tell the story” of AI-assisted innovation through the lens of human contribution, while accurately detailing the technical aspects and improvements of AI systems. AIs involved in the process.
This guidance represents a balancing act on the part of the USPTO, seeking to foster innovation through AI while ensuring that the patent system continues to reward human creativity. It’s a clear message to the tech world: while AI can enhance innovation, the essence of patentability remains human intelligence and creativity.
