On July 17, 2024 [1], the United States Patent and Trademark Office (USPTO) released new guidance on the subject matter eligibility of patent claims related to artificial intelligence (AI) [1]. This guidance specifically addresses critical and emerging technologies [2], providing clarity on the assessment of AI-related inventions and reaffirming the application of the existing patent eligibility guidance (PEG) framework to AI technologies.
Description
On July 17, 2024 [1], the United States Patent and Trademark Office (USPTO) issued new guidance regarding the subject matter eligibility of patent claims involving artificial intelligence (AI) [1], specifically addressing critical and emerging technologies [2]. This guidance clarifies the assessment of AI-related inventions and reaffirms the application of the existing patent eligibility guidance (PEG) framework to AI technologies, highlighting their potential for practical applications [1].
Additionally, the guidance includes Examples 47-49 to assist practitioners and examiners [1], while the USPTO’s previous examination guidance [1], along with Examples 1-46 [1], remains relevant and serves as valuable resources for patent practitioners seeking to protect AI inventions [1]. However, significant questions persist regarding the status of AI systems as inventors under US law [2], as current regulations stipulate that inventors must be human [2], a requirement that is increasingly being scrutinized as AI systems demonstrate advanced capabilities in generating innovations [2].
Conclusion
The USPTO’s new guidance on AI-related patent claims underscores the growing importance of AI in technological innovation and the need for clear frameworks to assess patent eligibility. While the guidance provides valuable resources for practitioners, it also highlights ongoing debates about the role of AI systems as inventors, challenging existing legal frameworks that require inventors to be human. As AI continues to evolve, these discussions will likely shape future patent policies and regulations.
References
[1] https://www.jdsupra.com/legalnews/subject-matter-eligibility-of-ai-6815489/
[2] https://smb.austindailyherald.com/article/IP-and-Tech-Law-Firm-Addresses-the-Impact-of-AI-on-Patent-Protection?storyId=670dbbdb88d33a00081d9f7c
