USPTO publishes guidance on patentability of AI-assisted inventions

USPTO publishes guidance on patentability of AI-assisted inventions

Last week (12), the United States Patent and Trademark Office (USPTO) published a guide on the patentability of inventions assisted by artificial intelligence (AI). The guide consolidates guidelines and provides clarification for inventors seeking to patent inventions in the US that, to some extent, have been interfered with or contributed to by an AI.

Of the topics covered, the document first emphasizes that the patentability analysis of AI-assisted inventions should focus on human-authored contributions, since patents work to encourage and reward inventiveness. Thus, patent protection for these inventions can be sought in cases where a natural person has made a ‘significant contribution’ to the creation of the invention.

The guide then provides a series of principles for assessing whether a natural person’s contribution meets the “significant contribution” parameter. These include: (i) the use of an AI system by a natural person in the creation of an invention does not nullify the person’s contributions as an inventor; (ii) recognizing a problem and presenting it to the AI system to develop a solution does not, in itself, reach the level of significant contribution, however, a significant contribution can be demonstrated by the way in which the person builds on the prompt of a technical problem to obtain a solution by means of the AI system; (iii) designing, building or training an AI system to obtain a solution to a specific problem may be sufficient to set up a significant contribution; and (iv) owning or supervising an AI system may not be sufficient to set up such a contribution.

Finally, the guidelines also stress the importance of human contributions being duly recognized, even in AI-assisted inventions, and ratify the understanding that only natural persons can be named as inventors, emphasizing the focus on the human “significant contribution” to the invention.

The Guide is also applicable to the protection of industrial designs and cultivars.

The official document can be accessed via the link: Inventorship Guidance for AI-assisted Inventions

Note: For quick release and cost control, this English version is provided by automated translation without human review.