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Inventors who use AI in their creations can earn patents, but only if a human makes a significant enough contribution, the US Patent and Trademark Office (USPTO) says.
A newly published handbook, dubbed the "Inventorship Guidance for AI-Assisted Inventions," outlines how the USPTO will determine the value of that human contribution.
"This guidance explains that while AI-assisted inventions are not categorically unpatentable, the inventorship analysis should focus on human contributions, as patents function to incentivize and reward human ingenuity," the USPTO says.
The decision also affirms the USPTO's 2020 ruling that AI systems themselves cannot earn patents because Patent Law repeatedly refers to inventors as natural persons, using language such as whoever invents or discovers, himself, herself, individual, and person. As such, the USPTO provides guidance on how to determine which human name to include on the patent, as opposed to the name of an AI system.
In 2020, the USPTO rejected a patent application by inventor Stephen Thaler, who fed instructions to an AI tool to devise a new food and drink container. The Federal Circuit upheld the USPTO's decision a year later in 2021. Thaler then took his request across the pond and applied for a patent with the UK patent office, which also ruled against him for the same reason in December 2023.
To avoid confusion in the future, the USPTO posted examples of "hypothetical situations and how the guidance would apply to those situations to further assist our examiners and applicants in their understanding."
However, the guidance leaves much room for interpretation. While it argues that "merely recognizing a problem and presenting that problem to an AI system is not enough to establish someone as an inventor," someone could still earn a patent if they made a significant contribution to the prompt fed into the AI system. The USPTO also does not require patent applicants to disclose the use of AI, and the office decided not to implement any new requirements to do so.
"As AI becomes ubiquitous, including as people build on each other’s AI-assisted inventions, it will become increasingly difficult to identify the ways in which AI plays a role in the inventive process," the USPTO says.
The new guidance comes on the heels of a public request for comment on the use of AI during the invention process. It posed 11 questions for the public to answer, including: “How does the use of an AI system [in the invention process]…differ from the use of other technical tools?"
The USPTO opened comments in February 2023, and has now incorporated the "exceptional" responses into its guidance. Next, the USPTO will host a public webinar on March 5 from 1-2pm ET to explain "what the guidance is and is not" and to take questions.