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In Feb. 2024, the USPTO provided guidance in the Federal Register about artificial intelligence (AI) and inventorship.
USPTO guidance provided that:
All inventions need a human to provide a significant contribution to the invention where there is conception, recognition, and appreciation of the invention. The inventor can be assisted by AI, but only humans can be the inventor under current patent law.
The updates were given in a USPTO Alert on 2/12/24 and with Federal Register Inventorship Guidance for AI-Assisted Inventions from the Patent and Trademark Office 2/13/24.
The Guidance includes five Guiding Principles:
"1. A natural person's use of an AI system in creating an AI-assisted invention does not negate the person's contributions as an inventor. The natural person can be listed as the inventor or joint inventor if the natural person contributes significantly to the AI-assisted invention.
2. Merely recognizing a problem or having a general goal or research plan to pursue does not rise to the level of conception. A natural person who only presents a problem to an AI system may not be a proper inventor or joint inventor of an invention identified from the output of the AI system. However, a significant contribution could be shown by the way the person constructs the prompt in view of a specific problem to elicit a particular solution from the AI system.
3. Reducing an invention to practice alone is not a significant contribution that rises to the level of inventorship. Therefore, a natural person who merely recognizes and appreciates the output of an AI system as an invention, particularly when the properties and utility of the output are apparent to those of ordinary skill, is not necessarily an inventor. However, a person who takes the output of an AI system and makes a significant contribution to the output to create an invention may be a proper inventor. Alternatively, in certain situations, a person who conducts a successful experiment using the AI system's output could demonstrate that the person provided a significant contribution to the invention even if that person is unable to establish conception until the invention has been reduced to practice.
4. A natural person who develops an essential building block from which the claimed invention is derived may be considered to have provided a significant contribution to the conception of the claimed invention even though the person was not present for or a participant in each activity that led to the conception of the claimed invention. In some situations, the natural person(s) who designs, builds, or trains an AI system in view of a specific problem to elicit a particular solution could be an inventor, where the designing, building, or training of the AI system is a significant contribution to the invention created with the AI system.
5. Maintaining “intellectual domination” over an AI system does not, on its own, make a person an inventor of any inventions created through the use of the AI system. Therefore, a person simply owning or overseeing an AI system that is used in the creation of an invention, without providing a significant contribution to the conception of the invention, does not make that person an inventor.”
Source: Federal Register Inventorship Guidance for AI-Assisted Inventions from the Patent and Trademark Office 2/13/24
The Patent Office has provided two examples including a detailed discussion of how the guiding principles of the guidance given in the Federal Register Notice on 2/13/24, apply to those examples.
The two examples are a description of:
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