The USPTO Issues New Guidance On Inventorship For Artificial Intelligence-Assisted Inventions

On February 13, 2024, the USPTO issued its anticipated "Inventorship Guidance for AI-Assisted Inventions" ("Guidance"). 89 Fed. Reg. 10043. The Guidance comes on the heels of the Federal Circuit's decision in Thaler v. Vidal, 43 F.4th 1207, 1213 (Fed. Cir. 2022), in which the court held that an AI system cannot be listed as an inventor on a patent application. After considering the impact of Thaler and soliciting feedback from various stakeholders, the Guidance reveals how the USPTO intends to determine who, if anyone, should be credited as an inventor when AI is used to create an invention.

The Guidance illustrates the challenges that the USPTO — and ultimately the courts — face addressing AI related issues. This alert includes quick facts on the Guidance, a synopsis of the USPTO's analysis for determining inventorship for AI-assisted inventions, and a few RSHC first impressions.