US Patent Office Says Inventors Must be Human

The US Patent and Trademark Office (USPTO) has published a new guidance stating that only people can be named as inventors on patents and AI can contribute to the invention process.

These guidelines come as a response to the rise of generative AI contributions to scientific, technological, and creative advancements. President Biden issued an Executive Order in October 2023 requiring the USPTO to publish guidelines for inventions created with AI assistance by the end of February.

The guidelines provide a policy set out by the agency only and does not “constitute substantive rulemaking and does not have the force and effect of law. The guidance sets out agency policy with respect to the USPTO’s interpretation of the inventorship requirements of the Patent Act in view of decisions by the Supreme Court of the United States (Supreme Court) and the United States Court of Appeals.”

There are two large clarifications included in the “Inventorship Guidance for AI-Assisted Inventions” document with respect to AI. The first is that inventors are still eligible to apply for and receive patents, even in cases where AI has supported their work.

The USPTO states that a human must have made a “significant contribution” to the work and acknowledges that “determining whether a natural person’s contribution in AI-assisted inventions is significant may be difficult to ascertain, and there is no bright-line test.”

As such, it provides principles to help inventors determine if their contribution was “significant” while also stating “one must remember this determination is made on a claim-by-claim and case-by-case basis, and each instance turns on its own facts.”

For example, the principles include that an inventor who recognizes a problem and prompts an AI system for a solution has not contributed significantly to the invention.

In addition to the guidelines, the USPTO has provided examples to help the public and examiners in their application of the guidelines in specific scenarios. Of note is that the guidelines do not require inventors to actually disclose in their patent applications whether they have used AI to develop their inventions.

The second major clarification provided in the guidance is that only inventors or co-inventors on a patent can be “inventors or co-inventors on a patent.” AI systems aren’t eligible for authorship and cannot apply for a patent as an inventor or co-inventor.