Wilt Toikka Kraft LLP


Origins Unveiled: The Ongoing Relevance of Human Creativity in Patenting AI-Related Innovations

Artificial Intelligence (AI) systems are increasingly embedded in our lives, revolutionizing industries across the board. To address the complexities arising from human-AI collaborations, the US Patent and Trademark Office (USPTO), in line with section 5.2(c)(i) of the President’s October 30, 2023 Executive Order (EO) 14110, has released Inventorship Guidance for AI-Assisted Inventions effective from February 13, 2024.

This guidance, designed for both USPTO examiners and applicants, delves into the intricacies of inventorship in the context of AI utilization, including generative AI. By providing illustrative examples of AI’s varying roles in the inventive process, the USPTO aims to offer clarity on inventorship determinations.

Emphasizing the essential role of human input in AI-assisted inventions, the guidance underlines that patents may be granted when a human significantly contributes to the invention’s conception. Aligned with recent guidance from the US Copyright Office (USCO), both entities recognize the synergy between AI and human creativity.

Moreover, the guidance addresses the Federal Circuit’s pivotal 2022 ruling in Thaler v. Vidal, affirming that only natural persons can be recognized as inventors. It clarifies statutory provisions underpinning inventorship, ensuring clarity in patent applications.

Recognizing the challenges in evaluating human contributions to AI-assisted inventions, the guidance stresses the absence of a definitive test. Examiners evaluate factors such as human ingenuity and problem-solving skills, guided by established principles such as those in the Federal Circuit’s 1998 decision in Pannu v. Iolab Corp.

Through illustrative examples in the “AI-related resources” section, the USPTO showcases scenarios applying these principles, elucidating the role of human inventors in AI-driven innovation.

While AI systems cannot be designated as inventors, individuals who significantly shape the inventive process may qualify as inventors. The guidance emphasizes the importance of human insight and contribution in innovation.

DC Intellectual Property Lawyers acknowledge the challenges in identifying inventorship, emphasizing the duty of disclosure for patent applicants. This obligation ensures transparency in patent applications, especially in cases involving AI-assisted inventions, where evidence may be required to support inventorship claims.

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