The USPTO has issued guidance for determining inventorship for “AI-assisted” Inventions (set to become effective Feb. 13, 2024), which you can read more about here.
This guidance is strictly limited to the issue of inventorship with respect to AI and AI-assisted inventions; however, interestingly, the USPTO stated that within the next 270 days, it expects to provide additional guidance regarding the subject matter eligibility of AI and AI-assisted inventions. Arguably, this is a more critical and needed guidance rather than the seemingly settled decision issued in Thaler.
Noteworthy points from the Guidance include:
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Inventors and Joint Inventors named on U.S. patents and patent applications must be “natural persons.” (The holding from Thaler v. Vidal)
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AI-assisted inventions are not categorically unpatentable for improper inventorship. This is interesting because it openly suggests that they are patentable in some instances. This could potentially be a hint that the USPTO may not necessarily instruct its Examiners to treat AI-assisted inventions as “abstract ideas” and may, over time and depending on how impactful AI inventions are on society as a whole, move away from automatically issuing Alice based rejections for these inventions.
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A human (or “natural person”) must still have made a “significant contribution” to the claimed invention in order to be named as an inventor or joint inventor for an AI-assisted invention. The USPTO Guidance determines “significant contribution” using the factors outlined in Pannu v. Iolab.
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Notwithstanding the most recent previous point, there is no “bright line test” to determine whether a “natural person’s” contribution to an AI-assisted invention is “significant.”
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This Guidance equally applies to Design Patents and Plant Patents.
The USPTO Guidance concludes by reiterating the duties owed to the USPTO – namely the duty of disclosure (See 37 CFR 1.56, 1.555) and the duty of reasonable inquiry (See 37 CFR 11.18(b)(2)).