Blog | 02/13/2024

USPTO’s Stance on AI-Assisted Inventions: Human Conception is Key

Team Contact: Muhammad Siwani , Benjamin C. Stasa


The United States Patent and Trademark Office (USPTO) has recently set a course for the intellectual property landscape with its further guidance on AI-assisted inventions, as outlined in the Federal Register notice. This guidance addresses the burgeoning role of artificial intelligence in the innovation process, providing insights into the evolving dynamics of patent law and reinforcing the role of human creativity.

Central to this guidance is the explicit acknowledgment that patents serve to incentivize human creativity, necessitating that a natural person provides a “significant contribution” to the conception of the invention. This directive is not only a reflection of the foundational principles of patent law but also an acknowledgment of the challenges and complexities introduced by the integration of AI into the creative and inventive processes.

For intellectual property attorneys, this guidance provides a framework for navigating the nuances of AI-assisted inventions. It delineates the contributions of AI from those of humans, so that patents accurately reflect human intellectual contributions. This distinction is important for advising clients on patent strategies involving AI, emphasizing the potential importance of documenting human creativity within patent applications. Yet, this clarity brings forth new challenges, particularly in defining and substantiating what constitutes a “significant human contribution” versus the role of AI.

Case studies and legal precedents, such as the USPTO’s decision regarding the Device for the Autonomous Bootstrapping of Unified Sentience (DABUS), offer valuable insights into the practical application of the USPTO’s guidelines. The refusal to recognize AI as an inventor in these cases underscores the agency’s firm stance on the necessity of human contribution to patentable inventions, illustrating the complexities and legal interpretations involved in this evolving area.

Intellectual property attorneys are encouraged to perform analyses of AI contributions to ensure that patent applications meet the USPTO’s criteria for human involvement. This may include documenting the invention process, emphasizing human intellectual contributions, and staying informed about the evolving legal landscape regarding AI in patents.

The USPTO’s guidance, as detailed in the Federal Register notice, marks a step forward in addressing the challenges presented by AI in intellectual property law. It underscores a commitment to fostering innovation while ensuring that human creativity remains at the heart of the patent system. For the intellectual property community, adapting to these guidelines may facilitate navigating the complexities of AI-assisted invention patents, balancing technological advancement with the protection of human creativity.

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