In our client alert, A Brief Explanation of the USPTO’s Useful New AI-Assisted Invention Guidance, we discuss the Inventorship Guidance for AI-assisted Inventions, 89 Fed. Reg. 10043 (Feb. 13, 2024), recently released by the US Patent and Trademark Office (USPTO). The guidance provides inventors and patent applicants with a framework regarding AI-assisted inventions and how inventorship of such will be judged at the USPTO. Why should a retailer care?

Consumer goods producers use patents as one tool in their intellectual property toolbox to protect their products, company, and brand. This guidance is thus important for the producers of consumer goods, the retailers that sell those goods, and their respective in-house IP legal teams to understand, particularly as AI and its use become pervasive in the invention and creation of consumer products, services, and other offerings.

As we explain in our alert, the guidance, which is effective immediately, leaves the human inventorship requirement for patents unchanged. Inventions created entirely by AI remain unpatentable.

But the guidance does allow for the patenting of inventions created jointly between man and machine, provided the human(s) “significantly contributed to the invention.” 89 Fed. Reg. at 10046. This means that a person has to do more than merely rely upon an AI system to come up with an invention in order to obtain a patent on that invention. The USPTO recognizes in the guidance that there is no bright-line test for determining the significance of a contribution, but issued two examples with the guidance that present different scenarios with analysis regarding determination of inventorship. See 89 Fed. Reg. at 10045.

Notably, Example 1 issued with the guidance, called “Transaxle for Remote Control Car,” includes hypothetical claims and scenarios related to a mechanical device, which has applications in the retail and consumer goods space. This example presents five different scenarios based on development of a transaxle for a remote control (RC) toy car using an AI system—the AI system designs a new transaxle for the RC car based on human-entered generative AI prompts. For each of the five scenarios, the USPTO provides guidance on what the proper inventorship for a patent application claiming the transaxle would be. In doing so, the USPTO refers back to its list of “guiding principles” included in the guidance (and set forth in our alert). This example is highly informative and worth reviewing for a better understanding of how the AI-Assisted Invention Guidance may be implemented in the real world.

While the guidance only just issued, and clearly will face challenges and questions, this was a crucial step from the USPTO to clarify this evolving technological area.

The key takeaway for in-house IP legal teams is that, while humans remain central to the inventorship of patentable ideas, AI tools can be used to assist in the invention development process. However, such tools should be used with caution. Personnel using AI tools need to understand the required role of the human in an invention. That role goes beyond merely prompting the AI to produce a result and submitting it as an invention in a patent application to the USPTO.

In-house legal personnel, along with outside counsel, must evaluate what role the human played in the invention process to ensure that inventorship is proper for submission to the USPTO.