What is AI’s Role in IP: New USPTO Guidelines

According to an article by Venable, the US Patent and Trademark Office (USPTO) and the US Copyright Office have issued preliminary guidelines on patenting and registering AI-assisted inventions and authored works, addressing the challenges posed by AI’s growing role in the creation of intellectual property (IP). 

Here is a summary of the USPTO and Copyright Office guidelines on AI’s role in IP:

USPTO Preliminary Guidance on AI-Assisted Inventions
The USPTO guidance addresses patents and applications for AI-assisted inventions. It stresses that inventors named in patent applications must be “natural persons.” The guidance cites its denial of petitions that named AI systems as inventors, decisions that have been upheld on appeal. In addition, it cites the 2023 Manual of Patent Examining Procedure, which states that the named inventor must be a natural person. 

Although AI-assisted inventions can still be patentable, AI cannot be considered the sole inventor. Natural persons must have “significantly contributed” to the invention’s development. Factors to be considered have been articulated in Pannu v. Iolab Corp., which evaluated the level of human involvement in “conception or reduction to practice of the invention.” Applications lacking substantial human contribution under Pannu may face rejection.

US Copyright Office Guidance on Original Works of Authorship 
The US Copyright Office addresses copyright applications and existing registrations for original works of authorship. It assesses whether AI systems merely assisted in creating a work or performed traditional authorship tasks. For works combining AI-generated content and human input, copyright protection extends solely to the human-authored elements. Applicants must disclose AI involvement and explain human contributions. Failure to disclose AI-generated content may require corrections to existing registrations.

Conclusion
The USPTO and Copyright Office guidelines on AI’s role in IP emphasize the need for transparency in applications for patents and works of authorship. While AI can assist in creating content, human contribution remains central to qualifying for IP protection under current US law.