Wilt Toikka Kraft LLP


USPTO AI Guidance: The Current Human Advantage

On February 13, 2024, the USPTO released a Federal Register notice on Inventorship Guidance for Artificial Intelligence (AI)-assisted Inventions, responding to President Biden’s October 2023 Executive Order on the Safe, Secure, and Trustworthy Development and Use of Artificial Intelligence (EO 14110). Since August 2019, when the USPTO initially solicited public commentary on the patentability of AI-assisted inventions, DC IP attorneys have been navigating the intricate relationship between artificial intelligence and the patent system. The guidance echoes the 2022 Federal Circuit decision, Thaler v. Vidal, reinforcing that individuals, as defined in the Patent Act, unmistakably refer to humans, thus denying the USPTO application listing only an AI software system as an inventor. Nonetheless, despite this ruling, AI continues to play an increasing role in primary research, prompting practitioners to seek guidance from agencies like the USPTO for clarity.

In this Guidance, the USPTO clarifies that AI usage does not negate patentability, provided at least one natural person significantly contributed to the claimed invention and is named as the inventor(s). While this standard will necessitate future delineation, the USPTO has outlined the Pannu factors for courts to consider, emphasizing that true inventorship demands human involvement. Example 1 underscores that mere provision of a query or prompt to an AI algorithm, without substantial contribution to the claims, does not confer human inventorship.

While the Guidance sheds light on USPTO’s stance favoring human inventorship, it introduces new complexities. Determining inventorship will remain intricate, especially as AI’s role intertwines with inventive processes. Legal counsel must ensure human inventors substantially contribute to inventions, particularly for AI-assisted inventions. Despite discussions of potential disclosure requirements, the USPTO confirmed no affirmative disclosure is mandated regarding AI’s contribution, in contrast to the U.S. Copyright Office’s policy. However, applicants are obliged under 35 U.S.C. 115(b) to submit a declaration of proper inventorship. Additionally, the Guidance furnishes five guiding principles to practitioners for AI vs. human inventorship analysis, bridging the gap in AI and inventorship discourse temporarily.

Nonetheless, as AI integration intensifies, Congressional intervention may become imperative.

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