USPTO: AI-inventions ‘not categorically unpatentable’
US Patent and Trademark Office publishes ‘clear’ guidance mandating AI-related patents to have ‘significant’ human involvement | Cites one hypothetical example relating to the development of a compound for treating cancer | Kathi Vidal: ‘patent system was developed to incentivise and protect human ingenuity’.
The US Patent and Trademark Office (USPTO) has issued comprehensive new guidance on AI-assisted invention patents to explain how it will determine whether such inventions can be patented.
Titled Inventorship Guidance on AI-Assisted Inventions, the guidance was announced yesterday (February 12) and will be effective from today (February 13) when it will be published on the Federal Register.
USPTO director Kathi Vidal said that the guidance has been “bolstered” by the Biden administration’s Executive Order on the Safe, Secure, and Trustworthy Development and Use of Artificial Intelligence, released by the White House in October 2023, and which obligated the office to provide such guidance within 270 days.
Human contribution
The guidance provides instructions to examiners and stakeholders on how to determine whether the human contribution to an innovation is significant enough to qualify for a patent when AI also contributed to its creation, according to Vidal’s blog.
It “embraces the use of AI in innovation and provides that AI-assisted inventions are not categorically unpatentable”, she emphasised. The guidance “instructs examiners on how to determine the correct inventor(s) to be named in a patent or patent application for inventions created by humans with the assistance of one or more AI systems”.
The USPTO has given examples of hypothetical situations and how the guidance would apply to those situations.
One example concerns the development of a compound for treating cancer. The USPTO explains: “In this scenario, natural persons identify candidate drug compounds from the output of an AI system and take steps to synthesise a structurally modified drug compound.
"This scenario also includes a natural person who trains and maintains an AI system but does not participate in the AI process.”
The right balance
In her blog, Vidal explained that the US patent system “was developed to incentivise and protect human ingenuity and the investments needed to translate that ingenuity into marketable products and solutions”.
“[It] also incentivises the sharing of ideas and solutions so that others may build on them,” she added.
“The right balance must be struck between awarding patent protection to promote human ingenuity and investment for AI-assisted inventions, while not unnecessarily locking up innovation for future developments.”
‘Significant contribution’
The key question that the new guidance helps to address, explained Vidal, is whether the human named on a patent made enough of a contribution to be named as an inventor.
“To secure patent protection, there must be at least one named human inventor who meets that requirement...merely recognising a problem and presenting [it] to an AI system is not enough to establish someone as an inventor.
“That said, if an individual made a significant contribution through the construction of a prompt, that could be sufficient. However, maintaining ‘intellectual domination’ over an AI system does not, without more, make a person an inventor of any inventions created through that AI system.”
Vidal stated that there will be no new requirement to disclose the use of AI—except in rare circumstances.
The USPTO will continue to presume that the named inventor(s) in an application are the actual inventor(s), she added.
“What matters, under the guidance, is whether at least one human’s actions can be shown to rise to the level of inventorship and is listed as an inventor on the application.”
The guidance builds on the existing inventorship framework and the “significant contribution” test from the Federal Circuit’s 1998 Pannu case (Pannu v Iolab Corp.).
It follows shortly after the USPTO released guidance for judicial boards regarding the misuse of AI in legal proceedings, which was published on February 6.
‘Clear criteria’
Morgan Lewis partner Manita Rawat noted that the new patent guidance “establishes clear criteria” for determining human contributions in AI-assisted inventions, emphasising the “essential” role of humans in the patent process.
“The key takeaway from this guidance is that AI-assisted inventions are patentable when there is ‘significant’ human involvement to the ‘contribution to the invention’.”
“Mere ownership of an AI system or overseeing its operation, or mere implementation or reduction to practice, does not qualify as a significant contribution, which is consistent with existing case law in the US,” added Rawat.
In addition, she noted, a natural person must contribute ‘significantly’ to every claim in the patent application or patent.
“It's insufficient for a human to merely build or use an invention conceived by AI. The contribution must relate to the final idea of the complete invention as applied in practice.
“If a human constructs the AI's prompt in a way that elicits a specific solution to a problem, this may constitute a significant contribution. In some cases, designing, developing, or training the AI system to address a specific problem can qualify as a significant contribution.”
The USPTO is accepting public comments on the guidance for 90 days, until May 13, 2024.
Feedback can be given via the Federal Register. A public webinar on the new guidance will be held on March 5, from 1-2 pm Eastern Time.
The USPTO says it is also working on guidance related to other AI and emerging technology IP policy matters. It has issued guidance for practitioners using AI when practising before the Patent Trial and Appeal Board (PTAB) and Trademark Trial and Appeal Board (TTAB).
The office is working on additional guidance for practitioners using AI—as well as updating patent eligibility guidance relating to AI inventions—and will be seeking public input on how AI impacts other aspects of patentability.
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