Patentability hinges on whether a human made a "significant contribution," even when AI assists in the process of invention.

On Monday, the US Patent and Trademark Office (USPTO) issued guidance on the patentability of inventions developed with the assistance of artificial intelligence (AI). This guidance, which was published in the Federal Register on Tuesday, aims to bring clarity to the patent application process given that AI plays an increasing role in innovation across all aspects of technology.

The guidance was issued in response to the executive order from President Joe Biden to provide clarity on the patentability of AI-assisted inventions.

The key point highlighted in the guidance is that AI-assisted inventions are not automatically unpatentable. Based on the principle that patents are designed to incentivize and reward human ingenuity, it emphasizes that the focus of inventorship analysis should be on the human contributions.(See "Inventing with AI" for more details on this point.)

The guidance specifies that at least one human inventor must have made a "significant contribution" to the claimed invention for it to be eligible for patent protection. When multiple individuals collaborate on an invention, only contributors that made a significant contribution can be named as inventors.

The guidance underscores the importance of finding the right balance between encouraging innovation and avoiding the unnecessary restrictions on future developments. Echoing the guidance, USPTO Director Kathi Vidal noted in a blog post that "the right balance must be struck between awarding patent protection to promote human ingenuity and investment for AI-assisted inventions while not unnecessarily locking up innovation for future developments."

The guidance also outlines criteria for determining significant contributions, including the requirement that humans contribute to the definite and permanent idea of the complete invention. More specifically, the guidance addresses the role of AI in the invention process, stating that a significant contribution could be demonstrated by showing how a person constructed prompts to elicit a specific solution from an AI system.

It clarifies that merely making or building an invention that was conceived solely by AI is not sufficient. Simply owning or overseeing a system that creates an invention is not considered a significant contribution.

Lastly, applicants are reminded of the duty to inform the USPTO if a human did not significantly contribute to an invention made by AI.

The guidance is open for public comments for 90 days, and the USPTO plans to update the guidance as AI technology and legal precedent develops.

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