USPTO allows patents on artificial-intelligence-assisted inventions where a person contributed significantly to each claim

2024-02-13USPTO

Inventorship Guidance for AI-Assisted Inventions, 89 Fed. Reg. 10043 (Feb. 13, 2024), Docket No. PTO-P-2023-0043, with Example 1, "Transaxle for Remote Control Car," and Example 2, "Developing a Therapeutic Compound for Treating Cancer"

The USPTO issued the guidance directed by the October 30, 2023 Executive Order on artificial intelligence, applicable on publication to utility, design and plant patents. It states that artificial-intelligence-assisted inventions "are not categorically unpatentable," that under Thaler v. Vidal a machine cannot be named as an inventor, and that each claim must have been invented by at least one natural person who made a significant contribution under the Pannu factors. Under its principles, a person who only presents a problem to an artificial intelligence system may not be an inventor, although the way a person constructs a prompt in view of a specific problem to elicit a particular solution could be a significant contribution. Reducing an invention to practice is not enough, and merely recognizing and appreciating an output is not necessarily enough, but contributing significantly to the output or running a successful experiment with it can be. Designing, building or training a system for a specific problem may be a significant contribution. Maintaining "intellectual domination" over a system does not by itself make its owner an inventor. Where no natural person significantly contributed to a claim, the claim must be canceled or amended, and examiners are to reject it under Sections 101 and 115 of Title 35 of the United States Code. Posted examples apply the principles to a transaxle and a cancer therapeutic.

What it changesThe guidance makes the invention disclosure the inventorship record, and most disclosure forms are not built for it. For every invention made with a model in the loop, the form should record, claim by claim, who framed the specific problem, who wrote the prompts and why, who built or trained a model for the problem, what the model proposed, and who modified, tested or proved out the output. Describing the problem and building the design as generated is what the transaxle example treats as no inventorship, so a disclosure that records only the model's output and the engineer who ran it may support no inventor on the claims that matter. Claim drafting should follow the record: claims that turn on a modification a person made are defensible, and claims that read directly on unmodified output are exposed. The duty of disclosure reaches information showing that a named inventor did not significantly contribute, so the record also has to be accurate.

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Burbage Law is the practice of Jon Burbage, a registered patent attorney. 342 United States patents have issued from applications he wrote; the full list is on the Patents page. More about Jon Burbage.

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