The Human Element: USPTO Clarifies Inventorship for AI-Assisted Inventions
Discussions and speculation about the impact of artificial intelligence (AI) on human labor and technological innovation have become commonplace. As AI becomes an increasingly sophisticated tool in the landscape of technological innovation, questions surrounding its role in the inventive process have grown more pressing.
Initial Guidance from the USPTO
The U.S. Patent and Trademark Office (USPTO) first issued guidance to address this query on February 13, 2024 (2024 Guidance). This initial guidance based its assessment of AI-assisted inventions on the Pannu factors, a legal precedent used to determine whether multiple natural persons qualify as joint inventors, as established in Pannu v. Iolab Corp., 155 F.3d 1344 (Fed. Cir. 1998). The USPTO stated:
Although the Pannu factors are generally applied to two or more people who create an invention (i.e., joint inventors), it follows 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.
This reliance on the Pannu factors was later deemed misplaced, as it focused on the inventive contributions of multiple natural persons, rather than their use of non-human tools.
Subsequent Guidance and Clarifications
In light of the ill-fitting nature of the Pannu factors, the USPTO issued a second guidance on November 28, 2025 (2025 Guidance), which rescinded the 2024 Guidance. The 2025 Guidance discontinues the use of the Pannu framework, arguing that applying joint-inventorship factors to a non-human tool is inappropriate. However, it does not create new law for the inventorship determination, reinforcing that human contribution remains the centerpiece of inventorship inquiry in patent law.
A Foundational Principle: Only Natural Persons Can Be Inventors
The 2025 Guidance reinforces the foundational principle of U.S. patent law: Invention is a human venture, and inventorship is limited to natural people. This principle was affirmed in Thaler v. Vidal, 43 F.4th 1207 (Fed. Cir. 2022), where the U.S. Court of Appeals for the Federal Circuit held that the Patent Act requires inventors to be natural persons.
This does not mean that an invention is unpatentable simply because AI was involved in its creation. The critical inquiry remains whether one or more natural persons made a significant contribution to the invention’s conception. At the heart of the inventorship analysis is the legal concept of “conception”. Citing precedent such as Burroughs Wellcome Co. v. Barr Labs., Inc., 40 F.3d 1223 (Fed. Cir. 1994), the 2025 Guidance reiterates that conception is “the touchstone of inventorship.” Conception is defined as the formation in the mind of the inventor of a definite and permanent idea of the complete and operative invention.
The Guidance
Under 35 U.S.C. §§ 101 and 35 U.S.C. §§ 115, just as a laboratory flask cannot be named an inventor on a patent application, neither can an AI system, including generative AI. Thus, any application or claim listing AI systems should be rejected.
The USPTO’s guidance does not change even when multiple joint inventors are involved. While the 2025 Guidance advises against using the Pannu factors for evaluating a single human inventor using an AI tool, it clarifies that these factors are still correct for determining joint inventorship among multiple human collaborators.
Navigating International Filings and Priority Claims
The USPTO also addresses the complexities of international patent filings in its 2025 Guidance. To claim the benefit of a prior-filed application from another country, the U.S. application must name at least one natural person as an inventor who is also named on the foreign application. Consequently, the USPTO will not accept a priority claim from a foreign application that names an AI system as the sole inventor.
Implications for Inventors and Practitioners
The USPTO’s 2025 Guidance confirms that the use of AI does not alter the fundamental requirements for inventorship. Applicants and their legal counsel must continue to exercise due diligence in determining the correct inventors of a claimed invention, which includes a duty of reasonable inquiry into the contributions of each natural person involved in the inventive process.
For those leveraging AI, careful documentation of human contributions is more critical than ever. Inventors must articulate how they shaped the invention’s conception, whether through specific prompts, data selection, or post-processing of AI-generated output. Overreliance on AI may lead to inventions being dedicated to the public, as no person could make a valid claim of inventorship.
In summary, while AI may not be an inventor, its role as a powerful tool in the inventive process is formally recognized, with clear guardrails to ensure that human ingenuity remains the recognized source of patentable inventions.
