The US Patent and Trademark Office (USPTO) has rescinded its prior AI Inventorship Guidance issued in February 2024 under the previous administration and published new guidance.
The previous Guidance stated that
while AI-assisted inventions are not categorically unpatentable, the inventorship analysis should focus on human contributions, as patents function to incentivize and reward human ingenuity.
That previous Guidance was issued based on responses to a call for comments on AI inventorship in February 2023.
Questions included:
- How is AI, including machine learning, currently being used in the invention creation process? Please provide specific examples. Are any of these contributions significant enough to rise to the level of a joint inventor if they were contributed by a human?
- How does the use of an AI system in the invention creation process differ from the use of other technical tools?
- If an AI system contributes to an invention at the same level as a human who would be considered a joint inventor, is the invention patentable under current patent laws?
Both the old and new Guidance documents are on the proper legal standard for determining inventorship in patent applications for AI-assisted inventions.
As the new Guidance explains,
The approach set forth in [the prior] guidance, which relied on the application of the Pannu factors to AI-assisted inventions, is withdrawn. The Pannu factors only apply when determining whether multiple natural persons qualify as joint inventors. Pannu is inapplicable when only one natural person is involved in developing an invention with AI assistance because AI systems are not persons and therefore cannot be “joint inventors” so there is no joint inventorship question to analyze.
According to the new Guidance,
The same legal standard for determining inventorship applies to all inventions, regardless of whether AI systems were used in the inventive process. There is no separate or modified standard for AI-assisted inventions.
The new Guidance notes that the Federal Circuit has held that AI cannot be named as an inventor on a patent application (or issued patent) and that only natural persons can be inventors. Artificial intelligence systems can’t be named as inventors or joint inventors on a patent application because they aren’t natural persons.
As the Guidance explains,
The Federal Circuit has centered its inventorship inquiry around “conception,” characterizing conception as “the touchstone of inventorship.” Conception is “the formation in the mind of the inventor, of a definite and permanent idea of the complete and operative invention, as it is hereafter to be applied in practice.” Conception is complete when “the inventor has a specific, settled idea, a particular solution to the problem at hand, not just a general goal or research plan.
Generally, the USPTO presumes inventors named on the patent application data sheet or oath/declaration are the actual inventor or joint inventors. An application can be rejected under 35 U.S.C. 101 and 115 if it lists an AI system or other non-natural person as an inventor or joint inventor.
As the new Guidance explains,
AI systems, including generative AI and other computational models, are instruments used by human inventors. They are analogous to laboratory equipment, computer software, research databases, or any other tool that assists in the inventive process. As the case law establishes, inventors may “use the services, ideas, and aid of others” without those sources becoming co-inventors. The same principle applies to AI systems: they may provide services and generate ideas, but they remain tools used by the human inventor who conceived the claimed invention. When one natural person is involved in creating an invention with the assistance of AI, the inquiry is whether that person conceived the invention under the traditional conception standard…
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