Only human individuals can be named as inventors on U.S. patent applications, even if the human uses AI as a tool for assistance. We reported the U.S. Patent and Trademark Office New Inventorship Guidance for AI-assisted Inventions issued this week (See US Patent Alert: USPTO Issues Inventorship Guidance and Examples for AI-Assisted Inventions Today, February 12, 2024 (usaipr.com)). We provide the following key points summarizing what the guidance means for patent applicants:
1. The guidance does not constitute rule-making and does not have the force and effect of law. Instead, the guidance sets forth USPTO policy based on the USPTO's interpretation of the inventorship requirements of the Patent Act and related decisions from the U.S. Supreme Court and U.S. Court of Appeals for the Federal Circuit.
2. The guidance states that the USPTO will consider patent applications that name a machine to have improper inventorship. In support, the USPTO relies on the 2022 Thaler v. Vidal decision by the U.S. Court of Appeals for the Federal Circuit, which affirmed USPTO's decisions denying petitions to name an AI system as an inventor on two patent applications. The Federal Circuit held "that only a natural person can be an inventor, so AI cannot be." The USPTO's Manual of Patent Examination Procedure has been revised accordingly to make clear that an inventor, co-inventor, or joint inventor must be a natural person.
3. Use of an AI system by a natural person does not preclude the natural person from qualifying as an inventor or joint inventor if the natural person significantly contributed to the invention. The guidance recognizes that while AI may not be named an inventor, an AI system can be used as a tool to perform acts that could constitute inventorship if carried out by a natural person.
4. The guidance applies to AI-assisted inventions covered by utility patents and AI-assisted inventions covered by design patents.