The US Patent and Trademark Office’s (USPTO) recent guidance on patents for artificial intelligence (AI)-assisted inventions has clarified that these are not automatically dismissed, under one significant condition: the necessity of human engagement. This guidance strengthens the premise that the contribution of a human inventor is indispensable to qualify a patent application for approval. Link, Link
USPTO appears to be shaping a sensible balance, given the continual progress and integration of AI within the invention process. The effectiveness of this strategy, however, hinges on the approach, adoption, and application by both practitioners and examiners within the patent system.
The resolution of legal ambiguities is a key element of this guidance. The US Court of Appeals for the Federal Circuit’s 2022 ruling left some grey zones, particularly regarding the patentability of joint Human-AI inventions. These will now be addressed under the new guidance with the requisite of significant human input in the invention. Link
The guidance states that AI should be valued as a tool to fuel the inventive process rather than the fundamental originator or absolute source of an invention. Link A significant contribution test also forms the crux of the guidelines, requiring significant input from every inventor, whether human or AI, to warrant acknowledgment on a patent.
The guidance builds on current case law and stipulates that for patents with multiple inventors, each contribution must be indeed significant. Link However, implementing the significant contribution test poses challenges, and the integration of human involvement with the test ensures that the patent’s core functionality stems from human ingenuity.
While the guidelines provide hypothetical scenarios to aid interpretation, their practical application by legal practitioners and patent examiners remains dependent on nuances. For instance, the person who inputs the problem to the AI system may not qualify as an inventor if just passing on the output as an invention. Conversely, the same person could qualify as an inventor if their input into the AI system, such as a precise prompt, is designed to elicit a particular solution.
The USPTO guidelines have significant implications for in-house counsel, patent drafting attorneys, and patent agents. These practitioners should verify the extent of AI utilization to determine the inventorship of an invention and document AI use to thwart potential challenges during the patent application process and post patent-issuance litigation.
The guidelines’ information can also guide decisions on how to emphasize those attributes that are solely the product of key human contributions in contrast to those generated by AI when drafting the specifications and claims of patent applications. While AI can be a significant tool, legal professionals must be ready to document and navigate AI involvement in patents for the best possible protection amidst the rapidly evolving legal landscape.