FAQs on Inventorship Guidance for AI-assisted Inventions

The United States Patent and Trademark Office (USPTO) issued these responses to frequently asked questions (FAQs) about the USPTO’s Inventorship Guidance for AI-assisted Inventions. These FAQs provide additional information for stakeholders and examiners on how inventorship is analyzed, including for AI-assisted inventions.

Does the USPTO’s Inventorship Guidance for AI-assisted Inventions (“Guidance”) create a heightened standard of inventorship for AI-assisted inventions?

The Guidance does not create a heightened standard for inventorship. The Guidance explains that the inventorship analysis should focus on the human contribution, as patents function to incentivize and reward human ingenuity. Regardless of the technology used as a tool in the invention-creation process, the inventorship analysis focuses on the human contribution to the conception of the invention. Existing inventorship law applies regardless of whether an inventor uses a specific technology, such as AI, to assist in the creation of an invention.

When examining patent applications, do examiners typically need to investigate whether inventorship is proper?

Typically, examiners do not make inquiries regarding inventorship. As explained in MPEP § 2157, the USPTO “generally presumes that the named inventor or joint inventors in the application are the actual inventor or joint inventors to be named on the patent.” Because of this presumption, rejections under 35 U.S.C. §§ 101 and 115 for improper inventorship are rare. The Guidance maintains this presumption and does not impose additional responsibilities on examiners to investigate inventorship for AI-assisted inventions.

Does the Guidance impose, on applicants, an additional duty to disclose the extent to which an inventor used AI to develop the invention?

The Guidance does not impose any additional duty to disclose information beyond what is already mandated by USPTO’s existing rules and policies. The USPTO will continue to presume that the named inventor(s) in a patent application or patent are the actual inventor(s). Applicants and individuals associated with the filing or prosecution of a patent application will continue to be responsible for meeting their existing duties to the USPTO. See MPEP § 2001.