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Patents on AI-Assisted Inventions and New USPTO Guidance: Patentability, Inventorship, Significant Contribution

Recording of a 90-minute premium CLE video webinar with Q&A

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Conducted on Tuesday, April 23, 2024

Recorded event now available

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This CLE webinar will cover the patenting of AI-assisted inventions. The panel will examine the recently issued United States Patent and Trademark Office (USPTO) Guidance and what is expected for an AI-assisted invention to be patent eligible. The panel will discuss the inventorship analysis and what it may mean to meet the significant contribution requirement. The panel will offer best practices for handling AI-assisted inventions.


On Feb. 13, 2024, the USPTO issued "Inventorship Guidance for AI-assisted Inventions." The Guidance for inventions developed using AI stated that AI-assisted inventions are not categorically unpatentable. The Guidance took effect immediately.

The Guidance establishes standards that create potential new obligations for patent counsel. For an AI-assisted invention to be patent eligible, a natural person must have made a significant contribution to the invention. The Guidance lays out that humans must contribute to every claim in the patent, and "inventorship is improper in any patent or patent application that includes a claim in which at least one natural person did not significantly contribute to the claimed invention." The Guidance is in line with the Agency's policy that AI itself cannot be listed as an inventor.

Counsel must evaluate whether the person involved meets the level of significant contribution and ascertain whether the person's purported significant contribution was made by AI. Patent counsel should keep the new Guidance in mind when drafting or challenging AI-assisted patents.

Listen as our experienced panel of patent attorneys examines the new USPTO Guidance and patent eligibility of AI-assisted inventions in view of this guidance. The panel will discuss the inventorship analysis and the significant contribution requirement based on this guidance. The panel will offer suggested best practices for dealing with AI-assisted inventions.



  1. Patentability of AI-assisted inventions
    1. Naming inventors
    2. Significant contribution
  2. Duties owed to the USPTO
    1. Duty of disclosure
    2. Duty of reasonable inquiry
  3. Priority claims to prior-filed applications
  4. Examples
  5. Best practices


The panel will review these and other key issues:

  • What does the new Guidance mean for patent counsel seeking protection of inventions that use AI in their innovation?
  • What assistance does the new Guidance provide for determining significant contribution?
  • What strategies should counsel employ when evaluating significant contribution?


Ettinger, Heather
Heather Morehouse Ettinger, Ph.D.

Troutman Pepper Hamilton Sanders

Ms. Ettinger counsels life sciences clients on a variety of intellectual property matters. She excels at due diligence...  |  Read More

Pratt, Zachary
Zachary S. Pratt

Fredrikson & Byron

Mr. Pratt primarily focuses on the prosecution and litigation of software, mechanical and medical device patents in...  |  Read More

Wood, Steven
Steven L. Wood

Hunton Andrews Kurth

With an IP practice encompassing mechanical devices, remote monitoring and control systems, telecommunications systems,...  |  Read More

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