Stinson's IP Attorneys Examine USPTO Guidance on AI, Patentability and Inventorship in IPWatchdog Article

02.23.2024

Stinson LLP Partner David S. Kim and attorney Steven N. Levitt authored an article for IPWatchdog, "Digging Into the USPTO's AI Guidance: Adjusting Practices to Capture Human Contribution." They provide insight on the U.S. Patent and Trademark Office's (USPTO) guidance for patentability and inventorship involving intellectual property developed with the assistance of artificial intelligence (AI) systems.

The attorneys say the USPTO emphasizes a requirement for human involvement in the innovation process. They write that the guidance clearly states that claims of a patent or patent application need to reflect significant human contribution and caution that claims in which at least one human did not significantly contribute are deemed invalid.

"Companies should update their invention disclosure protocols to encompass inquiries about the utilization of AI in the inventive process," the attorneys write. "In an ideal world, detailed records of all the AI's inputs and outputs, as well as the models and datasets used in its training and evaluation, would be saved in case they are needed later to serve as crucial evidence of human involvement in the invention process."

They also advise practitioners to examine and inquire about the origin, development and training processes of AI systems and note that the USPTO guidance will evolve. "The USPTO recognizes that the guidance concerning AI-assisted inventions is an iterative process, with inventorship and determining the significance of a human contribution to an invention representing areas ripe for further clarity and refinement."

Kim advises on IP and technology-related issues across the broad spectrum of litigation and business law, with a focus on obtaining patents for technology, manufacturing and consumer goods companies. In-house counsel and inventors rely on him to guide them through product design and development, facilitate invention harvesting exercises, and identify whitespace for forward-looking innovations.

Levitt focuses his practice on mechanical, software and computer system patents. He helps clients evaluate the patentability of new inventions and prepares opinions on patent infringement and validity and has experience assessing clients' freedom to make, use and sell their products in view of issued patents asserted against them.

Read the full article.