On 12th February 2024, the United States Patent and Trademark Office (USPTO) released long-awaited guidance on the patentability of inventions developed with the assistance of artificial intelligence (AI). This announcement comes in response to an executive order from President Biden directing the USPTO to clarify the path for protecting these innovative creations.

For years, a grey area surrounded the inventorship of AI-generated inventions. While AI has revolutionised research and development, the question of who receives credit for its creations remained unanswered. The USPTO's guidance marks a significant step forward in addressing this complex issue.

The Key Takeaway: AI Cannot Be an Inventor, but Humans Still Claim Credit

The USPTO reiterates the 2022 Federal Circuit decision in Thaler v. Vidal, stating that AI systems themselves cannot be named as inventors on patents. Patenting remains solely for natural persons. However, the guidance emphasises that AI-assisted inventions are not categorically excluded from protection. If a human inventor has made a significant contribution to the invention, it remains patentable.

Determining "Significant Contribution": Navigating the Grey Area

The USPTO outlines five guiding principles to assess the substantiality of a human inventor's contribution:

• Conception: Did the human inventor conceive of the inventive concept? This implies understanding the problem and the general solution, even if AI generated specific details.

• Direction and Control: Did the human inventor exercise control over the inventive process, including setting parameters for AI tools and interpreting their outputs?

• Reduction to Practice: Did the human inventor contribute to transforming the concept into a tangible invention? This may involve experimentation, analysis, or decision-making based on AI outputs.

• Collaboration: Did the human inventor meaningfully collaborate with the AI, providing guidance and interpreting results?

• Problem Solving: Did the human inventor overcome challenges or make critical decisions during the inventive process, not readily achieved by the AI alone?

These principles establish a framework for inventors and their representatives to carefully document human contributions when filing patent applications for AI-assisted inventions. Clear and detailed records of conception, decision-making, and problem-solving involving human intervention will be crucial for demonstrating inventorship. Collaboration with patent lawyers experienced in AI-related matters is highly recommended to navigate the complexities of this evolving area.

Impact on Different AI Types: Not a One-Size-Fits-All Approach

The guidance's impact may vary depending on the type of AI used. Inventions generated by machine learning algorithms, where human input is limited to data selection and parameter setting, might face stricter scrutiny for demonstrating significant human contribution. Conversely, inventions arising from close collaboration with expert systems, where human expertise guides the AI's problem-solving, might have an easier path to patent protection.

Future Legal Developments: Staying Ahead of the Curve

This guidance represents a step forward, but the legal landscape surrounding AI-assisted inventions is dynamic. Future court rulings or challenges could refine the interpretation of "significant contribution," necessitating adaptation from patent practitioners.

Ethical Considerations: Beyond Legal Frameworks

As AI plays an increasingly significant role in innovation, concerns around bias in algorithms and the ethical implications of AI-generated inventions cannot be overlooked. Responsible development and patenting practices must carefully consider these ethical aspects alongside legal frameworks.

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Additional Resources:

• USPTO AI Guidance: https://www.uspto.gov/initiatives/artificial-intelligence
• USPTO Public Comments: https://www.uspto.gov/patents/laws/comments-public-response-specific-requests-uspto