In 2022, the Federal Circuit definitively ruled that artificial intelligence (AI) systems cannot be named inventors or co-inventors on patent applications, reinforcing the longstanding principle that only natural persons are eligible as inventors under the Patent Act.  This decision, however, left an important question unanswered: Are inventions created with AI assistance patentable?

Today, the United States Patent and Trademark Office (USPTO) has shed light on this matter with its latest guidelines for AI-assisted inventions.  These guidelines recognize the contribution of AI in the invention process while highlighting the crucial role of human inventors in this dynamic area.

The guidelines draw parallels to the legal requirements for multiple human inventors.  Here, each individual must make a “significant contribution” to the invention to be named as an inventor, as established in existing case law.  The guidelines clarify the focus: Rather than equating AI’s role in inventions to that of a human, the emphasis is on whether the human applicant has made a “significant contribution” to warrant inventorship.

Here are some key insights from the USPTO Guidelines:

Beyond Problem Identification

Identifying a problem or setting a research goal alone does not constitute an inventive act.  Prompting generative AI to find a solution, such as asking the generative AI system to design a water bottle with an integrated Bluetooth speaker, does not by itself qualify as a “significant contribution.”  In cases where a patent application is filed based on the AI’s output from such a prompt, the individual providing the prompt cannot be named as an inventor.  Still, the guidelines recognize the inventorship of individuals who formulate specific problems for AI systems to solve, especially those who meticulously craft prompts to elicit specific solutions from AI.

Contribution Beyond Realization

Merely recognizing an AI-generated invention does not automatically confer inventorship.  The USPTO guidelines stress the importance of substantial contributions to AI output.  For example, if the engineer from the previous scenario engages in additional experimentation and modifications of the water bottle designs suggested by the AI, these efforts could qualify them as an inventor for inventions stemming from the experimentation and/or modifications.

Essential Building Blocks

Individuals who play a key role in developing the components that lead to an invention are recognized under these guidelines.  For example, a person that designs, constructs, or specifically trains an AI system in relation to a particular problem can qualify as an inventor.  Conversely, a person who trains an AI system for general purposes might not meet the inventorship criteria.

Ownership vs. Inventorship

Simply owning or overseeing an AI system is not enough for inventorship.  The guidelines distinguish inventorship as requiring active and significant involvement in the invention’s conception.

Disclosure and Duty of Inquiry

The USPTO maintains its stance on disclosure requirements, reminding practitioners of their duty to disclose relevant information.  This includes evidence that might indicate a named inventor did not significantly contribute to the invention, particularly if an AI system actually made the contribution.

The guidelines also remind patent practitioners of their duty of reasonable inquiry, noting that patent practitioners should inquire about the use of AI in the invention creation process.  We recommend that inventors and in-house counsel should begin to document the role of AI in the invention processes.

The USPTO will be accepting comments on this guidance for 90 days and plans to update it as AI technology and legal precedents evolve.

The USPTO will host a webinar on Inventorship Guidance for AI-Assisted Inventions on Tuesday, March 5, from 1-2 p.m. EST.

Finally, the USPTO has provided two examples related to inventorship for AI-assisted inventions: