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Our Take on AI

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USPTO Provides Guidance on Inventorship of AI-Assisted Inventions

The USPTO provided guidance on inventorship of AI systems (including generative AI).  The USPTO indicated that “AI-assisted inventions are not categorically unpatentable,” but inventorship should still focus on human contributions and inventorship may be granted where human provide a significant contribution to the invention.  For this analysis the UPSTO cited to the Pannu factors "(1) contribute in some significant manner to the conception or reduction to practice of the invention, (2) make a contribution to the claimed invention that is not insignificant in quality, when that contribution is measured against the dimension of the full invention, and (3) do more than merely explain to the real inventors well-known concepts and/or the current state of the art.” Pannu v. Iolab Corp., 155 F.3d 1344, 1351 (Fed. Cir. 1998).

If you have any questions on analyzing the Pannu factors, or applying for a patent on your AI-assisted technologies, Baker Botts has a team of patent attorneys versed in AI technologies available to assist. 

The inventorship guidance for AI-assisted inventions is effective on February 13, 2024. This guidance applies to all applications, and to all patents resulting from applications, filed before, on, or after February 13, 2024.