USPTO provides guidance on the patentability of AI-assisted inventions

On February 13, 2024, the US Patent and Trademark Office (USPTO) issued examination guidance on the patentability of inventions developed with the assistance of artificial intelligence (AI) (the "Guidance").1 The Guidance is issued pursuant to President Biden's executive order from October 30, 2023, tasking the USPTO with publishing guidance to patent examiners and applicants on inventorship and use of AI (the "Executive Order")2 (which we previously discussed here) and follows case law and the USPTO's standing policy that AI itself cannot be listed as an inventor. The Guidance provides insights on how the USPTO will analyze inventorship issues when AI systems play a role in the inventive process.

The Guidance reiterates the Federal Circuit's Thaler v. Vidal holding that "only a natural person can be an inventor, so AI cannot be",3 while explaining that AI-assisted inventions are "not categorically unpatentable." The Guidance explains that the inventorship analysis for AI-assisted inventions turns on whether a natural person has significantly contributed to the claimed invention and that the use of an AI system does not, in and of itself, preclude a natural person from qualifying as an inventor.

When determining the significance of the human contribution, the USPTO will consider the Pannu factors (traditionally applied when determining joint inventorship). Accordingly, an inventor must:

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