Seed IP partner Steven Lawrenz has recently written the following article, "USPTO Issues Inventorship Guidance for AI-Assisted Inventions," which addresses issues of patenting with respect to inventorship in the ever-changing world of artificial intelligence.

‍USPTO Issues Inventorship Guidance for AI-Assisted Inventions

Those involved in making inventions have access to a set of AI tools whose power and sophistication are rapidly increasing. These include generative tools that can construct designs for new systems or processes, describe them, and even create drawings depicting them. Inference tools can test the efficacy of such designs, and also be incorporated as part of an inventive system or process designed by people.

On February 13, 2024, the USPTO issued guidance on obtaining US patent protection on inventions whose creation or operation involves AI tools.

The guidance confirms the judicial decisions regarding the Dabus automatic inventing system that found unpatentable a US patent application that listed nonhuman entities among the inventors identified for the application. (Section II.)

It is explicit in establishing, however, circumstances in which a patent application directed to the work of one or more human inventors who relied on AI resources can be found patentable. For patentability, a natural person must have made a significant contribution to the conception of the invention defined by each presented claim. The USPTO guidance identifies the following acts by a natural person as potentially being adequate to constitute the required significant contribution:

         • constructing a prompt submitted to an AI system

         • creating an invention or conducting a successful experiment based on the output of an AI system

         • designing, building, or training an AI system

(Section IV.B.)

The guidance also makes clear that, after an application is filed, Examiners may use the Requirement for Information process to seek details of the use made of AI tools in making the invention it claims.  (Section V.D.)

The guidance makes it advisable for those engaged in the patenting process to carefully consider and memorialize how people involved in making an invention utilized AI tools, and the contributions that they made alongside those tools.  

As AI tools continue to become more powerful and be used more widely, it is important to maintain an open mind about the best treatment for their contributions to the inventing process, particularly by both the USPTO and other patent offices around the world, and by the legislatures responsible for keeping current the laws that they implement.

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About the author

Steven Lawrenz works with his clients to develop highly-strategic patent portfolios in computer software, artificial intelligence, and Internet technologies, both in the US and abroad, with a special emphasis on avoiding subject matter eligibility issues. He evaluates third-party patent portfolios to counsel on avoiding patent infringement, and advises on the merits of acquiring particular patent assets. Additionally, Steve mines client patent portfolios to identify assets for licensing and enforcement, patent infringement counterclaims, and divestment. He is an authority on Patent Trial and Appeal Board procedures--particularly appeals from examiners’ rejections--and is experienced at preparing and prosecuting design patent applications, both for user interface elements and physical articles.

Steve is admitted to the Washington State Bar and is registered to practice before the U.S. Patent and Trademark Office. He is a member of the Washington State Patent Law Association. Steve is admitted to practice in the U.S. Court of Appeals for the Federal Circuit and the U.S. District Court for the Western District of Washington. He serves on the University of Illinois College of Law Seattle Alumni Chapter board.

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