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USPTO’s new AI-assisted invention guidelines

Technology for Lawyers

Published: March 29, 2024

After years of creating its AI guidelines ad hoc from decision to decision, the United State Patent and Trademark Office (USPTO) has issued guidelines on patenting AI-generated/assisted inventions. And the guidelines are a little less extreme than a lot of people probably thought they were going to be.
Welcome to the world, the USPTO’s Inventorship Guidance for AI-Assisted Inventions, 89 Fed. Reg. 10043 (2/13/24).
The new regs fall closely on the heels of the refusal of the U.S. Supreme Court to deny cert on Thaler v. Vidal, 43 F.4th 1207, 1213 (Fed. Cir. 2022), cert denied, 143 S. Ct. 1783 (2023), which held that “only a natural person can be an inventor, so AI cannot be.”
So I am not a patent attorney and I do not play one on TV. The following analysis comes courtesy of a blog by Hunton Andrews Kurth LLP.
The first takeaway from the new regs is that AI-generated inventions are still not allowed.
That is, an invention with absolutely no human intervention beyond the prompt. Ex.: “Invent me a time machine.” Time machine invented; prompter sends those plans to USPTO. Not allowed.
Furthermore, only humans (“natural persons”) may apply for a patent or any subsequent patent built upon that patent’s technology.
But how about those scary hybrids of human and machine?
What if you patent something and then plug those plans into an AI monster with a prompt to improve the original patent?
Probably allowed, as long as only the human signs the patent.
The lens to see through on this if the AI made a “significant contribution” to the patent.
This analysis relies on the Pannu factors from Pannu v. Iolab Corp., 155 F.3d 1344 (Fed. Cir. 1998).
These are: (i) contributing “in some significant manner to the conception or reduction to practice of the invention,” (ii) making “a contribution to the claimed invention that is not insignificant in quality, when that contribution is measured against the dimension of the full invention,” and (iii) doing “more than merely explain to the real inventors well-known concepts and/or the current state of the art[.]”
Sounds like each application will be decided by someone at the office on a case-by-case basis.
At any rate, read the new regs if you haven’t, and best of luck. You’ll need it.