The United States Patent and Trademark Office (USPTO) incentivizes the creation and protection of valuable new technologies by awarding limited monopolies to inventors via patents.  Some inventors are now taking advantage of the enormous potential of artificial intelligence (AI) to assist with their creations. This raises questions as to who (and what) can be named as inventors of AI-assisted inventions.

To help address these questions, the USPTO recently released guidance on inventorship for AI-assisted inventions.  The USPTO’s guidance begins by acknowledging that AI can be a valuable tool in the inventive process, with AI systems capable of generating new and inventive ideas that may not have been conceived by a human inventor alone. However, the guidance clarifies that under current patent law, only natural persons can be named as inventors.

The USPTO’s position is consistent with the legal principle that patents are granted only to individuals that conceive of and reduce to practice new and useful inventions, not machines. While AI systems can contribute to the inventive process, they are considered tools or machines and lack the legal capacity to be named as inventors.

The guidance emphasizes that the person or group of people who “contributed to the conception of the invention” should be named as the inventor. Conception is defined as the formation in the mind of an inventor of a definite and permanent idea of the complete and operative invention. The USPTO suggests that if an AI system merely executes instructions or algorithms provided by a human inventor without making any significant contribution to the conception of the invention, the human inventor should be named as the sole inventor.

However, if an AI system goes beyond executing instructions and actively contributes to the inventive concept by generating novel and non-obvious aspects of the invention, the guidance suggests that the human(s) who designed or trained the AI system may be named as co-inventors. The key determining factor is whether a human inventor actively participated in the inventive process and made a significant contribution to the conception of the invention.

The USPTO also clarifies that ownership of patent rights is separate from inventorship. The owner of a patent may be an individual, a company, or other legal entity, but inventorship is limited to natural persons who meet the legal requirements for being named as inventors.

The guidance acknowledges the challenges in determining inventorship for AI-assisted inventions, particularly when the inventive process involves collaborations between humans and AI systems. It encourages patent applicants to provide detailed explanations of the roles played by both humans and AI systems in the inventive process when filing patent applications.

As AI technologies continue to evolve and become more sophisticated, the issue of inventorship is likely to become even more complex. The USPTO’s guidance provides a starting point for addressing this issue within the current legal framework. However, it is worth noting that the guidance does not have the force of law and may not be binding on courts or other patent offices. The USPTO is seeking written comments from the public on the guidance until May 13, 2024.

Contact Tom Luebbering with questions about the PTO Guidance or related issues.