The US Patent and Trademark Office (USPTO) has issued new guidance on how inventorship is to be analyzed for inventions developed in part with the help of artificial intelligence (AI) systems.
The USPTO issued “Inventorship Guidance for AI-assisted Inventions” and requested comments from the public on the guidance in February 2024. The comment period ended June 20, 2024. The USPTO received 66 written comments from stakeholders, and their comments are on the Regulations.gov docket page.
The new FAQs address three questions:
1. Does the USPTO’s Inventorship Guidance for AI-assisted Inventions (“Guidance”) create a heightened standard of inventorship for AI-assisted inventions?
According to the USPTO,
The Guidance does not create a heightened standard for inventorship. The Guidance explains that the inventorship analysis should focus on the human contribution, as patents function to incentivize and reward human ingenuity. Regardless of the technology used as a tool in the invention-creation process, the inventorship analysis focuses on the human contribution to the conception of the invention. Existing inventorship law applies regardless of whether an inventor uses a specific technology, such as AI, to assist in the creation of an invention.
2. When examining patent applications, do examiners typically need to investigate whether inventorship is proper?
The USPTO explains that
Typically, examiners do not make inquiries regarding inventorship. As explained in MPEP § 2157, the USPTO “generally presumes that the named inventor or joint inventors in the application are the actual inventor or joint inventors to be named on the patent.” Because of this presumption, rejections under 35 U.S.C. §§ 101 and 115 for improper inventorship are rare. The Guidance maintains this presumption and does not impose additional responsibilities on examiners to investigate inventorship for AI-assisted inventions.
3. Does the Guidance impose, on applicants, an additional duty to disclose the extent to which an inventor used AI to develop the invention?
The USPTO says that
The Guidance does not impose any additional duty to disclose information beyond what is already mandated by USPTO’s existing rules and policies. The USPTO will continue to presume that the named inventor(s) in a patent application or patent are the actual inventor(s). Applicants and individuals associated with the filing or prosecution of a patent application will continue to be responsible for meeting their existing duties to the USPTO. See MPEP § 2001.
MPEP § 2001 deals with the Duty of Disclosure, Candor, and Good Faith. This relates to 37 CFR 1.56 – the Duty to disclose information material to patentability.
Under 37 CFR 1.56,
Each individual associated with the filing and prosecution of a patent application has a duty of candor and good faith in dealing with the Office, which includes a duty to disclose to the Office all information known to that individual to be material to patentability as defined in this section.
Way back in 2017 and 2019, we blogged about the issue of whether a robot could be an inventor.
More recently, we published this blog about a Federal Circuit decision that only human beings – and not an artificial intelligence (AI) can be considered an “inventor” under US patent law.
In 2023, we wrote about how the US Supreme Court declined to hear a petition on the issue of whether artificial intelligence (AI) can be considered an inventor on a patent.
It’s still less than clear where the USPTO and/or the courts would draw the line between using AI as a tool (which is permitted) and using AI as an inventor (which isn’t allowed).
In its Artificial Intelligence Strategy report, the USPTO noted that AI-related patent applications have increased 33% since 2018 and AI-related inventions appeared in 60% of all technology subclasses in 2023.
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