New AI Patent Guidance Offers Compromise for Humans and Machines

The US Patent and Trademark Office’s latest guidance affirms that artificial intelligence-assisted inventions aren’t automatically ineligible for patents, but emphasizes the necessity of human contribution to qualify for patent protection.

The agency’s perspective on the impact of AI on patents appears, at least at the onset, to be a reasonable compromise. How it plays out, is deferred to, and implemented by practitioners and examiners remains to be seen.

Patents for AI-assisted inventions are permissible under the new guidance, provided that a human has made a substantial contribution to the invention. This resolves uncertainty stemming from a 2022 ruling from the US Court of Appeals for the Federal Circuit underscoring that patents require human inventors while failing to address human-AI “joint” collaborations.

In essence, the guidance stresses that AI should be viewed as a tool in the invention process rather than as a sole contributor.

The guidance also focuses on a significant contribution test requiring each inventor, whether human or AI, to contribute significantly to be named on a patent. While drawing parallels from existing case law, such as the requirement for multiple human inventors to contribute significantly, implementing this test presents challenges.

Requiring human involvement aligns with the significant contribution test, where the core functionality of the claim, rather than the non-functional descriptive material, must be sourced solely from a human’s ingenuity.

While the guidance provided hypotheticals, as with previous guidance, it’s unclear how these are interpreted or capable of being used by practitioners and patent examiners. For example, the guidance states a person who merely inputs a technical problem to a generative AI system and uses the output as the invention likely isn’t an inventor, barring patentability.

However, in this same example, the guidance provides a caveat that such a person may instead be an inventor depending on the sophistication of the input, such as a prompt. For example, if the construction of the problem statement is designed to elicit a particular solution to the problem, the person may be considered an inventor. As can be seen even in this hypothetical, the particulars of the underlying facts can drastically change an inventorship analysis.

The guidelines have practical impacts on in-house counsel, drafting attorneys, and patent agents. It explicitly references practitioners’ duty of reasonable inquiry (which remains unchanged) in the context of AI utilization.

As a result, patent counsel should be prepared to inquire about the extent of using AI to help determine the inventorship of an invention. Such an approach serves a dual purpose: first, to document the use of AI and then to guide practitioners when drafting specifications and, critically, the claims of patent applications.

Regarding the first purpose, documenting AI usage may assist in challenges to inventorship (either pre-grant or during litigation) and allow patent owners to head off complicated challenges based on the patent owner’s general use of AI.

Regarding the second purpose, practitioners may use the knowledge of AI usage to guide decisions on emphasizing (in claims and specification) those aspects that are solely the product of significant contributions by a human versus those aspects generated by AI.

The Patent and Trademark Office’s AI guidance at least clarifies what many already knew or expected—that AI can be used as a tool, at most. As the legal landscape evolves, documenting AI involvement should be considered for securing robust patents and navigating potential prosecution and litigation challenges.

This article does not necessarily reflect the opinion of Bloomberg Industry Group, Inc., the publisher of Bloomberg Law and Bloomberg Tax, or its owners.

Author Information

George Zalepa is a shareholder in the intellectual property and technology practice at Greenberg Traurig.

Nicholas Martin is of counsel in the intellectual property and technology practice at Greenberg Traurig.

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