On 13 February 2024 the US Patent and Trademark Office (USPTO) issued official Guidance for the treatment of AI-assisted inventions.  While the Guidance is undergoing a period of consultation, there is in our view a high chance that at least the core principles will be kept.

The USPTO will no longer allow any patent application or patent to include any claim that covers a feature or element created solely by an AI system.  All claims must cover solely features and elements that have involved significant human contribution.  This will apply not only in the future but also to existing US patent applications and patents.

For a person to be an inventor, the person must: (1) have contributed in some significant manner to the conception or reduction to practice of the invention; (2) must have made a contribution to the claimed invention that is not insignificant in quality, and (3) must have done more than merely explain to the real “inventors” well-known concepts and/or the current state of the art.  Failure to meet any one of these factors precludes that person from being named an inventor in the United States.

Although the Guidance focuses on the US, it will have reach in any other country from which a US patent or patent application has been derived.  The reason is that US applications and patents claiming priority from a foreign application must name the same inventors or have at least one joint inventor in common with the prior-filed application.  As a consequence, it is important to ensure that the US rules are met even for non-US patent applications and patents that have or may have a US counterpart.

The USPTO has provided the following non-exhaustive list of principles that can help:

• A natural person’s use of an AI system in creating an AI-assisted invention does not negate the person’s contributions as an inventor.
• A natural person who only presents a problem to an AI system may not be a proper inventor of an invention identified from the output of the AI system.
• A natural person who merely recognizes and appreciates the output of an AI system as an invention is not sufficient.
• A natural person who develops an essential building block from which the invention is derived may be considered to have provided a significant contribution to the claimed invention.
• A natural person simply owning or overseeing an AI system that is used in the creation of an invention, without providing a significant contribution to the conception of the invention, is not an inventor.