If an AI invents a new device, who claims the patent? Can it even be patented?

The issue of artificial intelligence-assisted inventorship has become increasingly urgent and murky. So when the US Patent and Trademark Office (USPTO) released its new guidance this week, it was a welcomed clarification.

"This guidance explains that while AI-assisted inventions are not categorically unpatentable, the inventorship analysis should focus on human contributions, as patents function to incentivize and reward human ingenuity," the document reads.

In a statement following the guidance's release, Kathi Vidal, director of the USPTO, noted that "the right balance must be struck between awarding patent protection to promote human ingenuity and investment for AI-assisted inventions while not unnecessarily locking up innovation for future developments." She then added that "as AI becomes ubiquitous, including as people build on each other’s AI-assisted inventions, it will become increasingly difficult to identify the ways in which AI plays a role in the inventive process."

While the guidance helps clarify this new frontier of patent law, implementation will continue to be a challenge, Jamie Nafziger, of Dorsey & Whitney, told CNN. “How sophisticated of a prompt will be required for a given invention? In connection with training an AI system, what level of planning will be required? Patent examiners will surely have some interesting challenges ahead.”

SCOTUS Agrees

Last year, the Supreme Court upheld a lower court’s ruling against Stephen Thaler, a computer scientist who was attempting to patent an invention created by an AI system he developed. The USPTO rejected the patent request, stating that no human inventors were involved, and the US Court of Appeals for the Federal District supported the claim.

However, Thaler’s supporters worried the ruling would have economically destructive effects. The Appeal Court’s ruling "jeopardizes billions (of dollars) in current and future investments, threatens U.S. competitiveness and reaches a result at odds with the plain language of the Patent Act,” Lawrence Lessig, a Harvard Law professor, wrote in a brief to the Supreme Court, notes Reuters.

It's a point that firm Skadden underscores. "As the conversation around AI inventorship unfolds, companies should be aware of alternative ways to protect their AI-generated inventions, such as using trade secrets," an insight piece published by the AmLaw100 firm states. "Similar developments in copyright law denying protection for purely AI-developed works only add to the complications that owners face in obtaining adequate IP protections for AI creations."

THE VERDICT:

So where should inventors and businesses alike land? IP law seems likely to continue in the direction that human contribution is a key factor in IP claims, but that should not limit AI investment, or its use in development. In-house counsel should focus on creating clear policies on AI integration in workflows, and protocols for how AI output is used in R&D and business development.