AI and Invention: USPTO Issues More Guidance

On July 17, 2024, the U.S. Patent Office issued additional guidance regarding patentability and inventorship concerns relating to Artificial Intelligence. This guidance expands upon prior guidelines, as discussed in a previous alert.

AI and Inventorship

Patent Office guidance remains consistent: an AI engine cannot legally be an inventor or a co-inventor. This position remains consistent with other authorship rights for copyrights.

However, a human inventor can work with an AI engine to develop or refine an invention. AI-assisted inventions are not categorically unpatentable, but rather one or more persons must have made “a significant contribution” to the claimed invention.  The primary scope of the July 17, 2024 guidance updates and seeks to clarify 35 U.S.C. §101 and the inclusion of AI as part of subject matter eligibility. Specifically, the guidance explains how to evaluate the claim of AI engine functionality as Step 2A, Prong One and Step 2A, Prong Two analyses.

Assessing “Mental Process” and AI

When assessing a “mental process,” the guidance states that claims do not recite a mental process when they contain limitations that cannot be practically performed in the human mind. When a claim recites or encompasses AI in a way that the process cannot be performed in the human mind, the claim cannot be found to be a “mental process.”

Assessing AI Improvements

When assessing improvements in the function of a computer or improvements to another technology, many claims to AI inventions are eligible as improvements. The guidance notes that a claim with mere recitation of applying an AI engine or linking the use of an AI engine to a particular technological environment or field of use fails to constitute an improvement, and thus, remains ineligible as patentable subject matter.

Patent Eligibility

In assessing patent eligibility where your invention includes AI technology, the guidance outlines additional use-case examples of patent eligibility. The Patent Office continues to maintain an open dialog on the role of AI technology in continuing innovation, as well as guidelines for crafting patent claims as being patent eligible under 35 U.S.C. §101.

As attorneys with legal experience with the intersection of IP and AI, we can help you protect your AI-assisted inventions, file patents on inventions in the AI field, and manage and navigate any concerns relating to the proliferation of AI. If you have questions about AI or protecting your IP, contact a member of our Intellectual Property team.