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The U.S. Patent and Trademark Office (USPTO) has issued updated examination guidance ("New Guidance") on inventorship in applications involving artificial intelligence (AI). The document rescinds and replaces the February 13, 2024 guidance and clarifies how inventorship should be determined when AI is used in the inventive process. The New Guidance jettisons the Pannu test for this purpose, which focused on joint inventorship issues, and instead focuses on conception. This action is another step by the new USPTO leadership to bolster the patent system. It remains to be seen whether the courts will agree with this approach. It is possible that some patents will be granted by the USPTO under this guidance but be found invalid by the courts. This will remain highly fact dependent. Below is a detailed breakdown of the key changes and practical implications for patent strategy across utility, design, and plant filings.
The Big Reset: Prior AI Inventorship Guidance Withdrawn
The USPTO expressly rescinds the February 13, 2024 "Inventorship Guidance for AI-Assisted Inventions" in its entirety and withdraws its application of the Pannu joint inventorship factors to AI-assisted inventions as a general inventorship framework. The Office emphasizes that Pannu was and remains a doctrine to determine joint inventorship among multiple natural persons; it does not apply where the only other "participant" is an AI system, which by definition is not a person. In short, the prior approach is off the table, and the agency has refocused the analysis on traditional legal principles of conception and inventorship.
No "Joint Inventor" Question When AI Is the Only Other Actor
The New Guidance squarely states that when a single natural person uses AI during development, the joint inventorship inquiry does not arise because AI systems are not "persons" and therefore cannot be joint inventors. This resolves prior confusion over whether to run a joint-inventorship analysis in single-human-plus-AI scenarios; the answer is no. The presence of AI tools does not, by itself, trigger multi-inventor analysis.
One Uniform Standard: Traditional Conception Governs AI-Assisted Work
The USPTO underscores that the legal standard for inventorship is the same for all inventions—there is no separate or modified standard for AI-assisted inventions. Only natural persons can be inventors under Federal Circuit precedent. Accordingly, AI—regardless of sophistication—cannot be named as an inventor or joint inventor. The touchstone of inventorship remains "conception," defined as the formation in the inventor's mind of a definite and permanent idea of the complete and operative invention. Conception requires a specific, settled idea and a particular solution to the problem at hand; a general goal or research plan is insufficient.
Conception Requires Particularity and Possession
The New Guidance reiterates that inventorship is a highly fact-intensive inquiry focused on whether the inventor possessed knowledge of all limitations of the claimed invention such that only ordinary skill would be necessary to reduce it to practice, without extensive research or experimentation. The analysis turns on the ability to describe the invention with particularity; absent such a description, an inventor cannot objectively substantiate possession of a complete mental picture. This framing reinforces the benefit of robust, contemporaneous documentation of the inventor's mental steps and the concrete claims that flow from them—especially when AI has been used to generate or refine inputs that inform the claimed features.
AI as a Tool: Presumptions, Naming Practices, and Rejections
As a practical matter, the USPTO maintains its presumption that inventors named on the application data sheet or oath/declaration are the actual inventors. However, the Office instructs that a rejection under 35 U.S.C. §§ 101 and 115 (or other appropriate action) should be applied to all claims in any application that lists an AI system or other non-natural person as an inventor or joint inventor. Conceptually, AI systems—including generative AI and computational models—are "instruments" used by human inventors, analogous to laboratory equipment, software, and databases. Inventors may use the "services, ideas, and aid of others" without those sources becoming co-inventors; the same principle applies to AI systems. When a single natural person is involved, the only question is whether that person conceived the invention under the traditional conception standard.
Multiple Human Contributors: Joint Inventorship Still Uses Pannu
When multiple natural persons are involved in creating an invention with AI assistance, traditional joint inventorship principles, including the Pannu factors, apply to determine whether each person qualifies as a joint inventor. Each purported inventor must: (1) contribute in some significant manner to the conception or reduction to practice; (2) make a contribution that is not insignificant in quality relative to the full invention; and (3) do more than merely explain well-known concepts or the current state of the art. Importantly, the mere involvement of AI tools does not alter the joint inventorship analysis among human contributors. Practitioners should evaluate and document each human's inventive contribution against the claims, as usual.
Beyond Utility: Design and Plant Patents Are Covered
The New Guidance confirms that the same inventorship inquiry applies to design patents and utility patents. For plant patents, the statute and Federal Circuit precedent require that the inventor contributed to the creation of the plant (not just discovered and asexually reproduced it). The USPTO clarifies that these principles apply equally when AI assists the development of designs or plant varieties. As a result, applicants should treat AI involvement as they would any other tool across all patent types—demonstrating human conception and contribution consistent with the governing statutes and case law.
Priority and Benefit Claims: Inventor Identity Must Align
For applications and patents claiming benefit or priority (U.S. or foreign) under 35 U.S.C. §§ 119, 120, 121, 365, or 386, the named inventors must be the same—or at least one named joint inventor must be in common—and must be natural persons. Priority claims to foreign applications that name an AI tool as the sole inventor will not be accepted. Where a foreign application names both a natural person and a non-natural person (e.g., an AI) as joint inventors, the U.S. filing must list only the natural person(s), including at least one in common with the foreign filing. The same approach applies to national stage entries under 35 U.S.C. § 371: name the natural person(s) as inventor(s) in the application data sheet accompanying the initial U.S. submission.
Practical Implications and Action Items for Patent Strategy
- Document human conception thoroughly. Maintain detailed inventor notebooks (electronic or paper) that describe, in the inventor's own words, the definite and permanent idea of the complete and operative invention—especially the claim limitations—before or contemporaneous with AI use. Capture prompts, inputs, iterations, and the human analysis that distills AI outputs into specific claim language or design features. This helps establish the inventor's possession and particularity.
- Treat AI outputs like lab results, where feasible. If AI "conceives" part of the "invention" to be claimed, conduct careful analysis of whether there is sufficient human conception.Position AI as an instrument that provides data or suggestions. The decisive step is the human's mental formation of the complete and operative invention—a specific solution and claimable features—not the mere receipt of AI-generated content.
- Adjust cross-border filing strategies. In jurisdictions that allow non-human inventors, plan ahead to avoid misalignment with U.S. requirements. Ensure that priority chains retain at least one natural-person inventor in common and that U.S. filings exclude non-natural persons from inventorship. Coordinate with foreign counsel on naming conventions to preserve U.S. priority.
- Prepare for examiner scrutiny. Anticipate that examiners may question inventorship in filings that discuss AI extensively. Have ready documentation demonstrating human conception and the particular claim limitations conceived by the human inventor(s), as well as appropriate inventorship declarations.
What Did Not Change
- Despite evolving capabilities, AI cannot be named as an inventor in the U.S., and the inventorship standard is unchanged: it centers on human conception.
- Traditional inventorship doctrines continue to apply. Conception, joint inventorship, and priority requirements remain grounded in statutory and Federal Circuit principles. AI is treated as a tool, not as a co-inventor.
- Claims drive the analysis. Whether one inventor or many, the question is who (or what) conceived the limitations of the claimed invention. The presence of AI does not alter the claim-centric nature of inventorship assessments.
Bottom Line
The USPTO's New Guidance simplifies and clarifies the path forward: there is no AI-specific inventorship test, AI cannot be named as an inventor, and traditional conception standards govern. For single-inventor, AI-assisted cases, focus on documenting human conception with particularity. For multi-inventor scenarios, continue to apply Pannu among human contributors. Extend these principles across utility, design, and plant filings, and ensure priority claims align with natural person inventorship to avoid fatal defects. With careful documentation and claim-focused analysis, AI can be a powerful instrument in innovation while maintaining clear, defensible human inventorship.
The content of this article is intended to provide a general guide to the subject matter. Specialist advice should be sought about your specific circumstances.
