The US Patent and Trademark Office (USPTO) has recently affirmed its position that artificial intelligence (AI) systems cannot be recognized as inventors in patent applications. This clarification comes as the USPTO published its latest guidance after conducting a series of "listening" tours to gather public feedback on the matter.
According to the guidance, AI systems and other entities categorized as "non-natural persons" are ineligible to be listed as inventors. However, the guidance also emphasizes that individuals are permitted to leverage AI tools in the process of creating inventions, provided they disclose the use of AI during the patent application.
The central theme of the guidance revolves around the role of human inventors, emphasizing that the utilization of AI by a natural person does not disqualify them from being considered an inventor. However, it sets a significant condition for patent eligibility – the person using AI must have made a substantial contribution to the conception of the invention. The guidance explicitly states that merely overseeing an AI system's operation without actively contributing does not confer inventorship.
The USPTO underlines that a person who instructs an AI system to create something and supervises its output does not automatically become an inventor. Instead, it emphasizes that a person can demonstrate a significant contribution by constructing the prompt to elicit a specific solution from the AI system in response to a particular problem.
Moreover, the guidance dispels the notion that merely maintaining 'intellectual domination' over an AI system is sufficient for claiming inventor status. In other words, individuals who own or oversee an AI system that generates inventions cannot file patents for those inventions solely based on ownership or supervision.
This recent guidance from the USPTO builds upon its 2020 ruling, where it specified that only "natural humans" can apply for patents. This decision followed the denial of a petition from researcher Stephen Thaler, who attempted to include the AI system he created, DABUS, as an inventor in a patent application. The USPTO's decision was upheld by a US court. It's worth noting that a separate federal court ruled that AI systems cannot be granted copyright, following another application by Thaler involving an AI-generated image.
The USPTO's comprehensive guidance is part of an ongoing effort to address the intersection of AI and intellectual property, reflecting the evolving landscape of technology and innovation. The guidance is aimed at providing clarity on how the patent office intends to handle AI-related inventions and inventorship.