Official guidance on patent protection for AI create inventions

“Can AI invented inventions be patented?” This question is trending and has so far only been answered by the courts in the cases of Dabus (see blog). Until now there has not been any official guidelines to this answer yet. However, the United States Patent and Trademark Office (hereinafter ‘USPTO’) just did. From 13 February 2024 the USPTO’s Inventorship Guidance for AI-Assisted Inventions (hereinafter ‘the guidance’) became effective. The guidance will apply to all United States patent applications filed on or after 13 February 2024. The guidance intents to provide a framework that guides the approach to be followed in evaluating whether an AI-created invention is eligible for patent protection.

 
What is the guidance?

To apply for a patent a human inventor needs to be listed as inventor. The guidance offers directions on how to assess whether a person's contribution to an innovation is significant enough to be regarded as inventor, especially when AI also played a role. It furthermore supports the integration of AI in innovation and emphasizes that inventions assisted by AI are not automatically disqualified from patent protection. The guidance also guides examiners in determining who the appropriate inventor(s) are in a patent or patent application for innovations created with the help of AI.

 
Guiding principles for AI inventions

In order to obtain patent protection for an invention which was co-created by AI, a person’s contribution to the invention needs to be significant. However, it can be challenging to determine whether a person's contribution is significant since there's no clear-cut test for it. To help applicants and USPTO personnel determine significant inventorship of a person, the following list of principles were provided:

1. Use of an AI system by a natural person to create an AI-assisted invention does not negate their role as an inventor. The person can be listed as an inventor if they contribute significantly to the invention.
2. Merely presenting a problem to an AI system may not make a person a proper inventor. However, significant contribution in constructing the prompt for a specific problem could establish inventorship.
3. Merely appreciating the output of an AI system does not make a person an inventor. However, contributing significantly to the output to create an invention or conducting a successful experiment using the AI system's output may establish inventorship.
4. Developing an essential building block for a claimed invention, even if not present in every activity leading to conception, may be considered a significant contribution. Designing, building, or training an AI system for a specific problem could also qualify as inventorship.
5. Maintaining "intellectual domination" over an AI system alone does not make a person an inventor. Simply owning or overseeing an AI system without providing a significant contribution to the invention does not confer inventor status.

 
Relevance to practice

There is a lot of uncertainty going on regarding whether an invention may be patented where AI was used to create the invention. This result in a lot of inventions created by AI not being patent protected. These guidelines is the first step to providing clarity on patent protection of AI created inventions. Hopefully, this will provide an incentive in the form of patents to inventors using AI in their inventions. Even though these guidelines are only applicable to the United States, it is already a first step in the right direction. This will hopefully also guide future decisions on patentability of AI created inventions in Europe. The USPTO has organized a public webinar on 5 March 2024 from 1-2 p.m. ET and is also seeking public comments on the Guidance with a deadline of 13 May 2024. Hereby the Dutch version.