The United States Patent and Trademark Office (USPTO) published its first guidance on determining AI inventorship last February. In doing so, the USPTO set forth its policy that a named inventor must have made a “significant contribution” to the conception of an invention to qualify as an inventor, including those patents and patent applications derived from AI assistance.
One issue became how would the USPTO enforce this guidance? Some feared that the USPTO might issue a flurry a Rule 105 Requests for Information regarding inventorship, and that inventors might have to document the facts surrounding the conception of the invention, such as what AI prompts the inventor used, to satisfy a duty of good faith and meet a heightened standard.
While this remains unsettled, last month the USPTO issued a follow up FAQ (non-binding) assuring inventors that the official guidance does not create a heightened standard for inventorship. Also the Office clarified that it rarely makes inquiries regarding inventorship and that it will continue to presume “that the named inventor or joint inventors in the application are the actual inventor or joint inventors to be named on the patent.”
Learn more here: https://www.uspto.gov/initiatives/artificial-intelligence/faqs
By: Michael Messinger and Graham Christian