April 16, 2024
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While AI’s rapid development and ever-increasing proliferation have facilitated substantial efficiency gains across a myriad of industries, unanswered legal questions regarding the consequences of its use have rendered the utility of AI precarious. This is especially true in the realm of intellectual property, where the use of AI presents direct challenges to such fundamental conceptions as creativity, inventiveness, and ownership (on which traditional legal frameworks of copyright and patent law rest).
With respect to patents, whether and how legal protections could extend to inventions facilitated by the use of AI remained uncertain until this past February, when the United States Patent and Trademark Office (“USPTO”) provided its first comments on the matter. In a federal register notice, it provided the following inventorship guidance for AI-assisted inventions:
Only humans can be inventors for the purposes of patent ownership. Accordingly, AI systems may not be listed as inventors.
While AI-assisted inventions are not inherently problematic, the patentability of the underlying invention rests on “significant contribution” from a human inventor.
The USPTO has acknowledged a number of outstanding questions related to subject matter eligibility and obviousness, noting that the guidance represents its current position and is only the first in what it expects will be an iterative process. Inventors can expect the periodic issuance of supplements as the jurisprudence and technology develop.
Notably, the USPTO has cautioned that the guidance “does not constitute substantive rulemaking and does not have the force and effect of law.”
Authors: Roy Friedman and Arash Rouhi