According to a report from The Verge, The United States Patent and Trademark Office (USPTO) recently published its latest guidance on the use of artificial intelligence (AI) in the patent process. According to the new guidelines, AI systems cannot be listed as inventors in patent applications. However, the use of AI tools by humans in the process of creating patented inventions is allowed.
The guidance came after USPTO conducted several "listening" tours to gather feedback from the public. The agency clarified that disclosing the use of AI in the invention process is necessary, just as it requires all applicants to list all material information necessary to make a decision.
However, for a person using AI to be able to register a patent, their contribution to the invention’s conception would have to be significant. Merely asking an AI system to generate or create something and overseeing the outcome, does not establish them as an inventor. The USPTO believes that presenting the problem to an AI system or "recognizing and appreciating" its output as a good invention does not grant them credit for the patent.
“However, a significant contribution could be shown by the way the person constructs the prompt in view of a specific problem to elicit a particular solution from the AI system,” the USPTO says.
Moreover, the office clarified that "maintaining ‘intellectual domination’ over an AI system does not, on its own, make a person an inventor." This means that overseeing or owning an AI that creates things does not entitle a person to file a patent for them.
It's worth noting that the USPTO's decision comes after it denied a petition from researcher Stephen Thaler in 2020. Thaler added an AI system he created, DABUS, as an inventor in a patent application, but the US court upheld the patent office's decision. Another federal court also ruled that AI systems cannot be granted copyright after Thaler applied for an AI-generated image.
To develop new guidelines on handling AI in patent and copyright petitions, the USPTO and the US Copyright Office conducted a series of public consultations.