In recent years, artificial intelligence (AI) has thrown a monkey wrench into traditional patent law. The President’s Executive Order 14110 on the Safe, Secure, and Trustworthy Development and Use of Artificial Intelligence (October 30, 2023), directed the United States Patent and Trademark Office (USPTO) to develop guidelines addressing the impact of AI on inventions and their patentability. 

In response to the President’s Executive Order, on February 13, 2024, the USPTO – the federal agency that grants U.S. patents and registered trademarks – issued new guidance for human created (natural persons) inventions with assistance from artificial intelligence (AI). The inventorship guidance applies to all applications filed before, on, or after February 13, 2024. The USPTO invites public written comments until May 13, 2024 on the guidelines. The purpose of the guidance is to provide clarity to the public, inventors and USPTO employees regarding the patentability of AI assisted inventions.

Key Points from the Guidance

• AI-Assisted Inventions Not Categorically Unpatentable. The guidance makes it clear that AI-assisted inventions are not categorically unpatentable. It recognizes that AI can play a significant role in innovation and focuses on the human contribution to an invention when AI is also involved.
• Determining Human Contribution. The guidance provides instructions to the USPTO employees and inventors on how to determine whether the human contribution to an innovation is significant enough to qualify for a patent when AI has also contributed. It emphasizes that patent protection may be sought for inventions in which a human (natural persons) provided a significant contribution.
• Existing Inventorship Framework. The guidance builds upon the existing inventorship framework by providing instructions 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.

In summary, the USPTO’s new inventorship guidance strikes a balance between awarding patent protection for inventions created by natural persons and those created with human contributions but assisted by AI. This guidance, which goes into effect on February 13, 2024 and applies to all applications filed before, on, or after February 13, 2024, emphasizes that AI-assisted inventions are not categorically unpatentable. Instead, it provides instructions to examiners and stakeholders on how to determine whether the human contribution to an innovation is significant enough to qualify for a patent, even when AI systems have played a role in the invention process.