Patent inventors can only be natural humans & other USPTO Guidance

Michelle Ma
March 4, 2024

AI Talk

On February 13, 2024, the USPTO issued guidance as to patentability and inventorship as it relates to AI and AI-assisted inventions, and requests comments from the public in the next 90 days. Its main points clarify topics startups and AI companies  should keep in mind when submitting patent applications: 

  • All inventors (including joint inventors) named on patent applications must be “natural persons” – humans. 
  • AI-assisted inventions are NOT “categorically unpatentable”. A natural person who used an AI system to produce an AI-assisted invention can be named as an inventor if he or she “significantly contributed” to the invention. 

So, what’s a “significant contribution”? The USPTO doesn’t provide a bright-line test, but does list a few considerations, along with an example here and here: 

  • A person constructs a “prompt in view of a specific problem to elicit a particular solution from the AI system.”
  • A person conducts a successful experiment using the output from an AI-assisted system.
  • A person develops an essential building block in the AI system that is used in the invention, such as designing, building or training an AI system. 

What is NOT a “significant contribution”? The USPTO clarified with these examples:

  • A person who only owns or oversees an AI system does not automatically become an inventor of any inventions that were created using that AI system. 
  • A person who presents a problem to the AI system is not an inventor of the output generated by the AI system. 

This guidance is a reminder that the US patent system’s purpose is to encourage human ingenuity and encourage progress in the science and arts. While this guidance can be helpful for AI companies looking to patent certain technologies, keep in mind that the USPTO is seeking public comment and may modify its guidance pending comment and any judicial decisions. What do you think about what constitutes a “significant contribution”? While the guidance is helpful, I look forward to seeing future signal based on patent applications submitted. 

Comments or suggestions for blog post topics? You can reach me at michelle@michellemaesq.com.