Patent practitioners and inventors may be required to declare the use of artificial intelligence (AI) in the invention process when submitting patent applications to the United States Patent and Trademark Office (USPTO). Concealment of important information from the USPTO can render a patent invalid.
Under the current Duty of Disclosure, the USPTO needs to be informed of all relevant facts about patentability, including prior art papers discovered by foreign patent offices and publications describing comparable inventions or techniques. This allows for a more efficient patent examination.
Using AI is becoming more common
The increasing use of generative AI is changing the way we innovate. Nowadays, it is common for humans and AI systems to work together to find innovative solutions to various challenges. As a result, the USPTO is re-evaluating its standards for disclosure obligations, given the emergence of AI-assisted inventions.
The USPTO released new guidelines on Feb 13, 2024, for determining inventorship. They clarify eligibility for AI-assisted inventions to be patented and specify responsibilities for submitting and pursuing patent applications. The new guidelines cover all types of patents, including utility, design and plant patents.
Duty of Disclosure
The updated Duty of Disclosure specifies that disclosing the use of artificial intelligence is not mandatory unless the regulations of the USPTO specifically require it. However, if it can be proven that an inventor’s contribution to an invention was insignificant due to its creation by an AI system, this could be used to challenge the invention’s patentability. In such cases, the USPTO would require the disclosure of this evidence.
What the future holds
In the coming years, it will be crucial for corporations and patent practitioners to contemplate the possible use of AI in the invention process. Patent practitioners can offer guidance on how to effectively use AI in developing inventors’ discoveries, and determine the appropriate circumstances for its use.