Patent Office issues guidelines for AI-assisted inventions

The US Patent and Trademark Office (USPTO) has issued guidance and examples for inventions assisted by artificial intelligence (AI). It went into effect on February 13.

This guidance is related to the USPTO’s obligations under the Executive Order on the Safe, Secure, and Trustworthy Development and Use of Artificial Intelligence.

In August 2019, the USPTO issued a request for public comments on patenting AI-assisted inventions. Among other things, the USPTO requested comments on inventorship, such as the different ways a natural person (i.e., a human being) can contribute to the conception of an AI-assisted invention.

According to Kathi Vidal, Under Secretary of Commerce for Intellectual Property and Director of the USPTO,

The patent system was developed to incentivize and protect human ingenuity and the investments needed to translate that ingenuity into marketable products and solutions. The patent system also incentivizes the sharing of ideas and solutions so that others may build on them. The guidance strikes a balance between awarding patent protection to promote human ingenuity and investment for AI-assisted inventions while not unnecessarily locking up innovation for future developments. The guidance does that by embracing the use of AI in innovation and focusing on human contribution.

As Reuters noted,

U.S. courts have determined that AI systems cannot receive patents for fully AI-generated inventions but have not yet considered when a person can receive patents for inventions made with AI assistance.

In April 2023, the US Supreme Court declined to hear a challenge by computer scientist Stephen Thaler to the USPTO’s refusal to issue patents for inventions his artificial intelligence system created.

As Reuters explained,

Thaler founded Imagination Engines Inc., an advanced artificial neural network technology company based in Saint Charles, Missouri. According to Thaler, his DABUS system, short for Device for the Autonomous Bootstrapping of Unified Sentience, created unique prototypes for a beverage holder and emergency light beacon entirely on its own.

Lower courts had ruled that patents could only be issued to human inventors.

As the USPTO explained in the Federal Register,

On April 22, 2020, the USPTO issued a pair of decisions denying petitions to name the Device for the Autonomous Bootstrapping of Unified Sentience (DABUS), an AI system, as an inventor on two patent applications. The USPTO's decisions explained that under current U.S. patent laws, inventorship is limited to a natural person(s). The USPTO's decisions were upheld on September 2, 2021, in a decision from the United States District Court for the Eastern District of Virginia. On appeal, the Federal Circuit affirmed in Thaler v. Vidal (Thaler) the holding “that only a natural person can be an inventor, so AI cannot be.” Specifically, the Federal Circuit stated that 35 U.S.C. 100(f) defines an inventor as “the individual or, if a joint invention, the individuals collectively who invented or discovered the subject matter of the invention.” (emphasis in original) The court found that based on Supreme Court precedent, the word “individual,” when used in statutes, ordinarily means a human being unless Congress provided some indication that a different meaning was intended.

Thaler also applied for DABUS patents in other countries, including the United Kingdom, South Africa, Australia, and Saudi Arabia, but was denied patents in most of them.

Thaler has also challenged the denial of copyright protection for AI-generated art by the US Copyright Office.

As the USPTO explains,

The guidance … makes clear that AI-assisted inventions are not categorically unpatentable. The guidance provides instructions to examiners and stakeholders on how to determine whether the human contribution to innovation is significant enough to qualify for a patent when AI also contributed. It builds on the existing inventorship framework by providing instructions to examiners and applicants on determining 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. It states that patent protection may be sought for inventions in which a human-provided a significant contribution to the invention.

Examples of hypothetical situations in which the guidance would apply are available on the USPTO’s AI-related resources webpage.

Example 1 involves a transaxle for a remote-control car. The USPTO states that if two company employees provided a general prompt to a generative AI (GAI) tool stating, “create an original design for a transaxle for a model car,” if the AI-generated design was used as-is in a patent application for the design, those employees could not properly be named as inventors, because to be named as an inventor in a patent application a person must make a significant contribution to the invention.

A contribution is considered significant if a person:

1. Contributed in some significant way to the conception of the invention,
2. Made a contribution to an invention that isn’t insignificant in terms of quality when measured against the full invention or
3. Did more than merely explain well-known concepts and/or the current state of the art.

However, the USPTO also provided an example of the employees using GAI prompts to generate several axle designs, then built and tested one such design and significantly modified it. In that case, the employees could be named inventors on the patent application.

In another example, the lead engineer who oversaw the creation and training of the GAI tool used by the employees to design the axle is not considered an inventor of the axle itself.

More information is in the USPTO Director’s Blog on AI and inventorship guidance: Incentivizing human ingenuity and investment in AI-assisted inventions.

Comments on the guidance can be submitted through the Federal eRulemaking Portal at www.regulations.gov. To submit comments via the portal, enter docket number PTO–P–2023–0043 on the homepage and select “Search.” The site will provide a search results page listing all documents associated with this docket. Find a reference to this document, select the “Comment” icon, complete the required fields, and enter or attach your comments. Written comments must be received on or before May 13, 2024.