On February 13, 2024, the USPTO issued a formal notice containing guidance for examination of applications in which AI contributed to the inventorship, which takes effect immediately for all newly-filed applications. The USPTO concluded that AI-assisted inventions “are not categorically unpatentable”, however, the inventorship analysis must “focus on human contributions”, meaning that inventions are protectable in which a natural human provided a “significant contribution” to the invention.

The USPTO’s guidance is influenced mainly by the precedential decision in Thaler v. Vidal, 43 F.4th 1207, 1213 (Fed. Cir. 2022), cert denied, 143 S. Ct. 1783 (2023) (“Thaler”), which upheld the USPTO’s denial of petitions to name an AI system called the Device for the Autonomous Bootstrapping of Unified Sentience (DABUS) as an inventor. The decision held that an inventor (or co-inventor), for the purposes of the Patent Act, must be a natural person.

However, the USPTO’s guidance does not preclude the use of an AI system by a natural person who can be listed as an “inventor”, so long as the natural person “significantly contributed” to the claimed invention. The USPTO views AI as a “tool” that can be used by an inventor in conceptualizing an invention. It is noted that one or more natural persons must “significantly contribute” to each and every claim of an invention. That is, claims which are significantly contributed to only by AI are not valid claims, even if other claims, including independent claims, are significantly contributed to by at least one natural person.

The USPTO guidance states that “merely recognizing a problem or having a general […] research plan” does not meet the standards of invention conception. However, an AI could be used by a valid inventor to elicit a specific solution to a specific problem. Additionally, mere “reduction to practice” may not qualify as inventorship on its own, but, for example, if a natural person “takes the output of an AI system and makes a significant contribution to that output,” the natural person could be considered an inventor.

A natural person who builds an AI system “in view of a specific problem or to elicit a particular solution” could also be an inventor, “where the designing, building, or training of the AI system is a significant contribution to an invention created with the AI system.”

Finally, merely “owning or overseeing an AI system” that is used to create an invention, without other significant contribution, “does not make that person an inventor.”

The USPTO is currently issuing examples of specific cases, which can be viewed at the following address:
http://www.uspto.gov/initiatives/artificial-intelligence/artificial-intelligence-resources

Please note that comments on this notice are now being accepted. If you would like to submit a formal comment to the USPTO, or have any questions or concerns about this directive, please contact us.