PTO Guidance on AI and Inventorship

Questions about who, or what, can claim inventorship on AI-assisted inventions have been tested in the last few years. The USPTO has issued a 27-page pdf to give guidance on the question of “how inventorship should be determined in U.S. patents and patent applications when AI, including generative AI, plays a role in the conception and/or reduction to practice of a given invention.”

The short version is that nothing has changed- only natural persons are considered as possible inventors.

That goes for, “joint inventors” or “coinventors” as well. Attempting to list a machine on an Application Data Sheet will be seen as improper inventorship.

Back in 2019, the Patent Office crowdsourced the public’s thoughts on AI-assisted inventions. It published a report on the findings in 2020, and in 2022 and 2023, the PTO held conferences where the major issues were considered.

A recent Executive Order was sent out recognizing the great potential of AI to solve some difficult problems but also calling for guidelines to both encourage a competitive ecosystem and guard against emerging risks. The USPTO guidance is a direct response to that Executive Order.  

The USPTO, while affirming that inventors must be natural persons, does acknowledge that “AI systems could perform acts that, if performed by a human, could constitute inventorship under existing U.S. patent law”. It also states that “AI-assisted are not categorically unpatentable, but inventorship analysis should focus on human contributions as patents function to incentivize and reward human ingenuity”.

The stress is that the U.S. patent system is designed to encourage human ingenuity.

Some of the guiding principles in determining AI-assisted inventorship include:

  • A natural person’s use of an AI system in creating an AI-assisted invention doesn’t negate the person’s contribution as an inventor.
  • Merely recognizing a problem doesn’t rise to the level of conception. A natural person who only presents a problem to an AI system may not be a proper inventor.
  • Reducing an invention to practice alone is not a significant contribution that rises to the level of inventorship.
  • A natural person who designs, builds, or trains an AI system in view of a specific problem to elicit a particular solution could be an inventor, if that person’s contribution was significant.
  • Maintaining intellectual domination over an AI system does not, in itself, make a person an inventor of any inventions created through the use of AI. Simply owning the system doesn’t make the person an inventor.

The guidance also stresses the duty of being forthcoming about the contributions that humans made in an AI-assisted inventions.

The discussion in the guidance clearly references Stephen Thaler and his attempts to get his DABUS system recognized as an inventor. The issues at stake for the PTO are that the patent system is conceived as an incentive and encouragement for human ingenuity and stimulus to sharing of knowledge. Including an AI system as an inventor isn’t going to stimulate more ingenuity in the AI system, so there is no point in it.

Nor is an AI system going to seek protection from infringement on any hypothetical patents to its name.

The rest of the guidelines are trying to find the balance between the input of human and machine in the process of innovation.

The full guidance can be found here: