Following the Inventorship Guidance for AI-Assisted Inventions, the United States Patent & Trademark Office (USPTO) has published a set of frequently asked questions (FAQs) and answers regarding the guidance (read analysis of the guidance here).
The FAQs first address whether the guidance creates a “heightened standard of inventorship for AI-assisted inventions.” Regarding this first point, the USPTO stated that the guidance “does not create a heightened standard for inventorship[,]” explaining that inventorship is concerned with human contribution. Thus, although a tool may be used to create an invention, it is ultimately the human’s role in conception that governs the inventorship analysis.
Next, the FAQs address whether examiners typically investigate proper inventorship. Here, the USPTO has stated that “[t]ypically, examiners do not make inquiries regarding inventorship.” The FAQs quote MPEP § 2157 for the presumption that named inventors are the actual inventors. The USPTO further explained that the guidance does not affect this presumption, and therefore does not add a duty on examiners to investigate inventorship.
Lastly, the FAQs discuss whether, under the guidance, applicants have an additional duty of disclosure when AI is used to develop an invention. Here, the FAQs state that there is no additional duty beyond existing USPTO rules. Therefore, publication of the guidance has not changed the duties of disclosure, candor, and good faith as recited in, for example, MPEP § 2001.
Read the published FAQs here.
Read analysis of the USPTO’s guidance here.
