The United States Patent and Trademark Office (“USPTO”) published new Guidance, effective February 13, 2024, on issues arising from the use of artificial intelligence (“AI”) to develop inventions. The Guidance provides clarity for USPTO stakeholders and personnel, including the Central Reexamination Unit and the Patent Trial and Appeal Board (“PTAB”), on how to analyze these issues. In, particular, the Guidance:
- Explains that AI-assisted inventions—inventions “created by natural persons using one or more AI systems”—are not categorically unpatentable in the U.S.
- Explains the USPTO’s view that patentability depends on the involvement of a natural person in the conception and development of the claimed invention, such that a natural person must, for each claim, at least meet the standards for naming a joint inventor—i.e., a natural person must significantly contribute to the claimed invention.
