USPTO Releases AI-Assisted Inventions Guidance

The U.S. Patent and Trademark Office (USPTO) has recently heralded a new era of innovation by acknowledging humans' pivotal role in AI-assisted inventions, through the Office's latest guidance on inventorship. This progressive approach celebrates human ingenuity, ensuring that inventions born from the synergy of human intellect and artificial intelligence (AI) are patentable, provided there is a substantial human contribution. If that standard is met, a human can patent an invention, even when AI plays a more significant role in the creation of the invention.

Significant Contribution Required By Human

The USPTO's framework makes clear that as long as a human is significantly involved in the conceptual phase, the human's contributions warrant protection. This is a crucial development for inventors who guide and refine the AI's output, ensuring that human intellect remains at the forefront of innovation.

The policy accommodates the realities of modern invention processes, where AI tools are often instrumental in developing new technologies. AI-assisted invention scenarios often involve significant human direction and ingenuity, effectively ensuring that there will typically be at least one natural person who meets the inventorship criteria.

Accidental Inventors Are Still Inventors, Right?

The USPTO has long recognized that inventor status is available to those who stumble upon new inventions, even if accidentally. This illustrates the serendipitous nature of discovery, where an individual may not set out with the intention to invent but, through interaction with AI or other tools, uncovers something novel, non-obvious, and useful. Such individuals are celebrated as inventors, acknowledging that innovation can arise from the unexpected outcomes of human-AI collaboration.

Pannu Factors the Right Tool?

By specifying that only natural persons can be inventors, the guidance aligns with the principle that the essence of invention is inherently human. Under the guidance, the only claims that are patentable in a patent application are those that are attributable to the human. All claims that are solely attributable to AI should be canceled.

The USPTO guidance suggests using the "Pannu factors" to evaluate significant contributions by the human v. AI. However, these factors were developed for the purpose of comparing contributions of joint inventors, not a human and a non-inventor. I am of the opinion that if the human contribution is significant enough to be recognized as an inventor, then the inventor should be allowed to direct claims to the new, useful, and non-obvious contributions of AI related to that invention as well. Requiring one to distinguish which claims are solely from AI and which are not adds another layer of complexity we do not need.

Beacon of Hope for AI-Human Inventors

For those who find themselves utilizing AI to invent, the USPTO guidance offers a beacon of hope. It validates the creative and sometimes serendipitous journey towards innovation, ensuring that all humans who make significant contributions to an invention are acknowledged as inventors.

In essence, the USPTO's guidance encourages a partnership between human and machine intelligence, ensuring that the patent system will continue to support all inventors, whether their discoveries are developed without the assistance of any tools or are developed utilizing AI and other modern tools.