Revised Inventorship Guidance for AI-Assisted Inventions: A New Direction from the USPTO

Written by Ben Esplin

The United States Patent and Trademark Office (USPTO) published its Revised Inventorship Guidance for AI-Assisted Inventions on November 28, 2025, immediately rescinding in its entirety the guidance issued under the previous administration, and creating uncertainty concerning the patentability of at least some AI-assisted inventions.

Overview

The new guidance, issued by USPTO Director John A. Squires, is clearly labeled and focused on the proper legal standard for determining inventorship in patent applications for AI-assisted inventions. Director Squires wastes little time: Section II immediately rescinds the February 13, 2024 guidance "in its entirety," withdrawing the previous administration's approach that relied on application of the *Pannu* factors to AI-assisted inventions.

The section entitled "Governing Legal Standards" provides a complete, precise, and accurate statement of the applicable law. The Federal Circuit has held that AI cannot be named as an inventor on a patent application or issued patent, and only natural persons can be inventors. The touchstone of inventorship remains conception—"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."

Comparison Between Guidance

The primary distinction between the new Revised Guidance and the previous guidance lies in the legal status accorded to AI under the applied law. The previous administration implicitly treated AI as an unnamed co-inventor participant by applying the Pannu factors—a joint inventorship test—even when only one natural person was involved. This administration views AI strictly as a tool, analogous to "laboratory equipment, computer software, research databases, or any other tool that assists in the inventive process."

The second significant distinction is certainty. The previous administration attempted to employ a well-settled legal test—the Pannu factors—to determine whether AI-assisted inventions were patentable, which invited examiners to scrutinize whether a human inventor made a "significant contribution" to each claim. The current administration has effectively put this question directly to the courts: inventorship will not be questioned at the USPTO unless an AI system is expressly named as an inventor. The USPTO presumes those inventors named on the application data sheet or oath/declaration are the actual inventors.

The Relevant Question

Section IV of the new Guidance poses the relevant question directly: "When one natural person is involved in creating an invention with the assistance of AI, the inquiry is whether that person conceived the invention under the traditional conception standard."

If conception, as defined by the Court of Appeals for the Federal Circuit and the Supreme Court, is the turning point for patentable invention, it will be interesting to see how courts rule on AI-assisted invention. Undoubtedly, there are fact patterns that make the patentability of at least some AI-assisted inventions problematic. For example, if "the invention" is an output from an AI system, when did the co-inventor form the invention in her mind? The conception standard requires that the invention be "so clearly defined in the inventor's mind that only ordinary skill would be necessary to reduce the invention to practice." On the other hand, there are a variety of strategies to minimize this risk.

Conclusion

If your company is engaged in AI-assisted innovation, and you would like to discuss potential implications of the Revised Inventorship Guidance for AI-Assisted Inventions, please reach out to me directly.