Wilt Toikka Kraft LLP


Traversing the Ambiguities: Grasping the USPTO’s Position on AI-Enhanced Inventions and Determining Inventorship

Throughout this insightful notice by the United States Patent and Trademark Office (USPTO), DC IP Lawyers emphasize the key considerations surrounding inventorship in AI-assisted inventions. The USPTO clarifies that only humans can be recognized as inventors, explicitly excluding AI systems. While AI-assisted inventions remain patentable, the USPTO asserts that human inventors must significantly contribute to the underlying invention.

In line with established case law, DC IP Lawyers stress the importance of naming only natural persons who have made substantial contributions as inventors. Any attempt to list AI systems or machines as inventors will be deemed improper by the USPTO, as reiterated in the Thaler v. Vidal case. The guidance highlights the need for a thorough inventorship determination, emphasizing that AI systems, though incapable of being named as inventors, can play a role in the invention process.

DC IP Lawyers draw attention to the obligation of patent practitioners to perform a reasonable inquiry into inventorship, particularly with AI-assisted inventions. The duty of candor and good faith extends to inventorship determinations, with practitioners required to disclose information that challenges inventorship claims. The guidance prompts practitioners to consider the ubiquitous nature of AI in the invention process and raises questions about whether detailed inventorship analyses will become a standard requirement, potentially altering current patent practice.

As users navigate the evolving landscape of AI-assisted inventions, DC IP Lawyers recommend open discussions with clients regarding proper inventorship and advise on the limitations surrounding the inclusion of AI systems as inventors in patent applications.

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