On Feb. 12, 2024, the United States Patent and Trademark Office (USPTO) revealed new guidelines addressing the role of artificial intelligence in the patent inventorship process.
This crucial move, instigated by a directive from President Joe Biden, seeks to clarify the murky waters surrounding AI-assisted inventions. At the heart of this development lies a crucial question: How does using AI tools impact the criteria for inventorship in patent applications?
In our latest #blog, learn about our new guidance that addresses whether AI-assisted inventions – created by humans with the assistance of one or more AI systems – are patentable. The guidance becomes effective tomorrow. Learn more: https://t.co/k05VbXbMLg pic.twitter.com/bsYWtNZVTY
— USPTO (@uspto) February 12, 2024
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Striking a delicate balance
The latest USPTO guidance is a significant step towards recognizing the delicate link between human creativity and AI assistance in innovation. The USPTO’s director, Kathi Vidal, stressed the importance of keeping a delicate balance. The objective is to encourage human creativity and investment in AI-assisted inventions without hindering future creativity. The guidance is straightforward in that AI-aided inventions are not automatically invalidated in terms of patentability.
“…strikes the right balance between protecting and incentivizing AI-assisted inventions and not hindering future human innovation by locking up innovation created without human ingenuity.”
This further supports the idea that using tools, including AI, does not take away the inventor’s contribution to the invention. The guidelines expand the existing legal precedents to claim inventorship based on the significant contributions to the conception or reduction to practice of an invention. The Pannu factors, introduced as the fundamental criterion for evaluating AI-assisted invention ships, provide the foundation for building AI inventorship. It hones in on the quality and impact of a person’s work compared to the AI system’s involvement.
“It follows that a single person who uses an AI system to create an invention is also required to make a significant contribution to the invention… to be considered a proper inventor.”
Principles for AI-assisted inventorship
The USPTO sets forth several guiding principles for discovering, in combination with an AI system, whether a person has an entitlement to be an inventor. The first of these assertions is that the involvement of AI in the invention process does not necessarily minimize the inventor’s innovative contributions. Further, the instructions clarify the difference between identifying a problem for the AI to solve and being directly involved in the AI’s output to perfect or come up with an invention.
The latter may qualify as a significant contribution, whereas the former likely does not. This nuanced approach emphasizes the importance of active, creative engagement with AI tools. It suggests that those who design, build, or train AI systems with a specific outcome in mind might also be considered inventors, depending on their contributions to the final invention.
Illustrative examples and real-world applications
The guidance document illustrates hypothetical scenarios that can be applied to real-life problems using the developed principles. These examples illustrate different areas of study, from engineering with remote control cars to cancer treatment with new chemical compound advancements. They portray different scenarios where people and AI systems cooperate, from using AI-generated outputs for experiment design to transforming AI system development for specific assignments.
One case involves engineers designing a transaxle using an AI system, demonstrating the situations where their input would or would not be considered inventions. A different scenario describes the creation of a therapeutic drug in which a researcher and an AI expert use an AI system together to pick the best candidates for drugs. These illustrations serve as a practical guide for people and organizations processing the patent application, enabling them to understand the subtleties of AI inventorship assessment.
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