USPTO’s AI Inventorship Guidance Charts New Path Forward for AI-Assisted Inventions

Shortly before President Trump issued Executive Order 14363, titled “Launching the Genesis Mission,” a “national effort to unleash a new age of AI‑accelerated innovation and discovery,” the U.S. Patent and Trademark Office (USPTO) published the “Revised Inventorship Guidance for AI-Assisted Inventions,” which may remove some of the uncertainty associated with the use of AI by inventors. These announcements further highlight the administration’s focus on facilitating the development of the AI industry in the United States.

The use of AI in the inventive process is now common, and its impact on patentability of inventions is yet to be fully assessed. The principle that AI cannot be named as an inventor is well established in prior guidance and Federal Circuit case law. But the extent to which AI use impacts inventorship has remained the subject of debate.

The USPTO’s 2024 “Inventorship Guidance for AI-assisted Inventions” relied on the three-part test articulated in Pannu v. Iolab Corp. for determining inventorship in the context of AI-assisted inventions. To assess inventorship, the applicant had to establish whether the inventor:

1. Contributed in some significant manner to the conception of the invention;
2. Made a contribution to the claimed invention that is not insignificant in quality when measured against the dimension of the full invention; and
3. Did more than merely explain to the real inventors well-known concepts and/or the current state of the art.

The earlier guidance explained that “a single person who uses an AI system to create an invention is also required to make a significant contribution to the invention, according to the Pannu factors, to be considered a proper inventor.” That is, use of AI imposed on the applicant the obligation to assess whether the human inventor had made a “significant contribution” when assessing patentability and assumed that AI had the capability of contributing to the inventive process. What constituted a “significant contribution” was also undefined, introducing uncertainty with regard to patent validity arguments in litigation.

The revised guidance discards this approach. Instead, it states that “generative AI and other computational models are instruments used by human inventors. They are analogous to laboratory equipment, computer software, research databases, or any other tool that assists in the inventive process. As the case law establishes, inventors may ‘use the services, ideas, and aid of others’ without those sources becoming co-inventors.” That is, the revised guidance strips the presumption that AI can contribute to the inventive process or be anything more than “tools used by the human inventor who conceived the claimed invention.” It emphasizes that “the touchstone of inventorship” is “conception,” or “the formation in the mind of the inventor, of a definite and permanent idea of the complete and operative invention, as it is hereafter to be applied in practice.” The revised guidance rejects the concept that AI is capable of this critical act of conception, marking a departure from the earlier guidance that treated AI as capable of engaging in such an act independent of the natural-person inventor involved.

The revised guidance also clarifies that the Pannu factors remain applicable where natural-person inventors are involved.

The shift in the USPTO’s approach is likely to have a significant impact on the use of AI by inventors. The use of AI tools in research and development may no longer pose a threat to patentability and is likely to trigger increased adoption and use of such tools, further aligning with the administration’s goal of creating a boom in the AI industry.