Patents are an important element of intellectual property, protecting inventions against unauthorized use and infringement. With the increasing role of artificial intelligence (AI) in modern society, new issues arise regarding the patentability of AI-enabled inventions. The US Patent and Trademark Office (USPTO) has recently issued new guidelines for granting patents for AI-enabled inventions that require a significant contribution from a human. In this article, we explore the implications of the USPTO’s AI patents guidelines.
The USPTO’s new guidelines address the role of human contribution in granting patents for inventions created with the help of artificial intelligence. The agency clarified that patents may cover AI-assisted inventions where “a natural person made a substantial contribution.” According to the USPTO, since patents function to encourage and reward human creativity, the determination of patentability should focus on human contributions. Therefore, a person must make a “substantial contribution” in order to obtain a patent for an AI-enabled invention.
According to the new guidance, while the use of AI does not automatically disqualify a human inventor from obtaining a patent, a person who “merely presents a problem to an AI system” may not be entitled to a patent for what the system produces. The USPTO has solicited public comment and held public hearings on AI-enabled patents and reiterated that only humans can be named as patent inventors.
The rise of AI has raised many new questions in intellectual property law, including when inventions created with the help of AI systems can be patented. US courts have determined that AI systems cannot be patented for inventions generated entirely by AI, but they have yet to consider when a person can obtain a patent for inventions made with the help of AI. The USPTO’s new guidelines bring some clarity to the issue by stating that a person can obtain a patent for an AI-assisted invention when he or she “substantially contributed” to the invention.
According to the USPTO, determining when an invention is patentable “should focus on human contributions, as patents function to encourage and reward human creativity.” The agency’s new guidance emphasizes that the right balance must be struck between granting patent protection to encourage human creativity and investment for AI-enabled inventions, and not unnecessarily locking up innovation for future developments.
While the USPTO’s guidelines provide some clarity, determining when a person has made a “substantial contribution” to an AI-enabled invention can be difficult and there is no “bright-line test”. The USPTO recognizes that a person who provides an “essential building block” for an AI-enabled invention can obtain a patent even if he or she was “not present or a participant in every activity” that led to the creation of the invention.
As a result, the USPTO’s guidelines for granting patents for AI-enabled inventions emphasize the importance of human contributions in the patenting process. The agency emphasizes that patents function to encourage and reward human creativity. While the rise of AI raises many new questions in intellectual property law, the USPTO’s new guidance provides some clarity on patenting AI-enabled inventions. The USPTO’s guidance can inform patent applicants, inventors and innovators about the role of human contribution in patenting AI-enabled inventions.
