New guidance from the U.S. Patent and Trademark Office rescinds the previous inventorship analysis involving AI, clarifying that the legal standard for inventorship remains rooted in human conception.
The dance of artificial intelligence (AI) and intellectual property (IP) has swung just as researchers began finding a rhythm. The U.S. Patent and Trademark Office has released new guidance that moves patent analysis away from its 2024 directive to simplify the path to patent protection. What is best for the invention is still what is best for protection. Collaboration among researchers and with IP attorneys is as important as ever.
The new guidance rescinds the previous inventorship analysis involving AI. It clarifies that while AI is a powerful instrument, the legal standard for inventorship remains rooted in traditional concepts of human conception. IP attorneys can still rely on familiar analysis.
An invention’s conception is still the key to inventorship that relates to academic researchers in three ways:
- The Inventor’s Creativity Matters. Inventorship turns on the natural person. The inventor must be a definite and permanent formation of the completed invention.
- Solutions Must be Specific. Conception is specific and settled. The inventor must have a technical solution to a technical problem.
- A Complete Description is Important. The inventors’ description supports the existence of the conceived invention.
A helpful analogy is readily apparent in university laboratories: AI systems are equivalent to laboratory equipment. A microscope does not diminish a researcher's status as an inventor. Similarly, generative AI does not negate human inventorship. AI systems may generate ideas. It may provide services. Yet it remains a tool. The inventors are the people who conceive the invention.
Using AI does not alter the standard analysis for teams of inventors. AI simply acts as a tool used by the team. Traditional rules still apply for analyzing when multiple people are involved in an invention, even with AI assistance.
IP analysis is complex and constantly changing. But collaboration between researchers and IP attorneys remains the crucial throughline. Proper documentation of the inventive process is vital. And inventors should continue to disclose their collaborators and use of AI tools to ensure strong and enforceable patent protection.
Dustin Lee is the University of Maryland, Baltimore's senior patent attorney.