Who Invented That? USPTO’s New AI Guidelines

The United States Patent and Trademark Office (USPTO) has taken a significant step forward with its recent guidance on evaluating inventorship for artificial intelligence (AI)-assisted inventions. Released on February 12, 2024, the guidance seeks to provide clarity on a nuanced issue that has garnered attention within the intellectual property community.

Key Takeaways from the AI Guidance:

  • AI System as an Inventor: The USPTO reaffirms that an AI system itself cannot be considered an inventor. Inventorship, according to the guidance, must focus on human contributions, aligning with the fundamental purpose of patents to incentivize and reward human ingenuity.
  • Human Inventorship with AI Assistance: Despite the role of AI in the invention process, human inventors remain central. A natural person utilizing an AI system qualifies as an inventor if they make a significant contribution to the invention, akin to the standards for joint inventorship.
  • Significance of Human Involvement: Each claim of a patent must have at least one human inventor who contributes significantly to the invention and possesses recognition and appreciation of it.

Applying the AI Guidance: Five Principles

The AI Guidance outlines five non-exhaustive principles to assist examiners and stakeholders in applying the standards for inventorship in the context of AI-assisted inventions:

  1. AI Assistance Allowed: The use of AI systems by a natural person in the invention process does not diminish their role as an inventor, provided they contribute significantly to the invention.
  2. Recognition of Problem Insufficient: Merely identifying a problem or setting a general goal does not constitute conception. A significant contribution is demonstrated by the manner in which the individual constructs prompts to elicit specific solutions from the AI system.
  3. Reduction to Practice Not Enough: Simply reducing an invention to practice does not qualify as a significant contribution. Individuals must go beyond mere appreciation of the AI system’s output and actively contribute to the invention’s development.
  4. Development of Essential Building Blocks: Individuals who develop essential components integral to the invention’s conception may be considered inventors, even if they are not directly involved in every step of the process.
  5. Ownership or Oversight Insufficient: Merely owning or overseeing an AI system does not confer inventorship. A significant contribution to the conception of the invention is required for individual recognition as an inventor.

The AI Guidance marks a pivotal moment in the intersection of technology and intellectual property law, providing clarity on a complex issue. As the USPTO continues to invite comments and monitor developments in this space, stakeholders are encouraged to actively participate in shaping the future of inventorship in AI-assisted inventions. By engaging with the guidance and contributing insights, industry participants can help foster a robust framework that encourages innovation while respecting the principles of inventorship.

AI Guidance underscores the importance of human ingenuity in the innovation process and sets a precedent for navigating the evolving landscape of AI-assisted inventions within the realm of intellectual property. As we move forward, continued collaboration and dialogue will be essential in ensuring a fair and equitable framework that fosters innovation and technological advancement.

If you are working on an AI-assisted invention, please reach out to our team at Pearson IP to protect your intellectual property.


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