Maria Laccotripe Zacharakis spoke to Managing IP about newly released guidance involving inventorship issues related to AI from the US Patent and Trademark Office. The guidance states that although AI systems can’t be listed as inventors, AI-assisted inventions are not categorically unpatentable. However, a human being must provide a significant contribution to the invention. Maria noted that this “may give rise to a slight change in practice where examiners may determine that AI was involved and ask the applicant to clarify who the inventors are.” She adds that “we [as practitioners] need to analyse the record and the facts – and if there’s any indication that AI was involved to push a little bit further [to clients] on that issue.”
She also notes that regardless of AI, determining inventorship can be a very difficult and very involved investigation. “That remains the same and becomes even more complicated with the addition of AI. The examples they provide are great and they give some guidance, but it’s not a straightforward inquiry,” she says.