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.

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. Pannu v. Iolab Corp., 155 F.3d 1344 (Fed. Cir. 1998). Regarding the applicability of the Pannu factors to AI-assisted inventions, the USPTO stated:

[a]lthough 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.

The 2024 Guidance's reliance on the Pannu factors was misplaced, as Pannu focused on the inventive contributions of multiple natural persons, not those persons' use of non-human tools to assist in innovation.

Perhaps 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ill-fitting nature of the Pannu factors, the USPTO issued a second guidance on November 28, 2025 (2025 Guidance), which rescinded the 2024 Guidance.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. The 2025 Guidance does not, however, create new law for the inventorship determination. To ease the minds of AI skeptics, both the 2024 Guidance and 2025 Guidance reinforced and clarified the application of existing patent statutes and case law, ensuring 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 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 "the Patent Act requires that inventors must be natural persons; that is, human being." Thaler, 43 F.4th at 1210.

This does not mean, however, 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, as it is hereafter to be applied in practice." Burroughs Wellcome, 40 F.3d at 1228 (internal cite omitted). Because conception is an act only achievable by a natural person, AI is more properly considered a sophisticated tool, similar to other laboratory instruments, in the hands of the natural person.

The Guidance

With this framework, the 2025 Guidance is clear and straightforward. 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. As such, any application or claim listing AI systems, including generative AI and other computational models, should be rejected.

The USPTO's guidance does not change even when multiple joint inventors are involved. Though the 2025 Guidance advises against using the Pannu factors to evaluate the contribution of a single human inventor using an AI tool, it clarifies that these factors are still the correct framework for determining joint inventorship among multiple human collaborators, even where those collaborators were assisted by AI. In other words, when several people work together to create an AI-assisted invention, the use of AI does not alter the traditional analysis under Pannu. Each person seeking to be named as a joint inventor must still make a significant contribution to the invention's conception.

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. If a foreign application lists natural persons and a non-natural person as joint inventors, the U.S. application must only list the natural persons on the application data sheet to comply with U.S. law.

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, this means that careful documentation of human contributions is more critical than ever. Inventors must be able to articulate how they shaped the invention's conception, whether through the construction of specific prompts, the selection and arrangement of training data, or the post-processing and refinement of AI-generated output. It could be argued that overreliance on AI, where no single person can demonstrate a significant contribution to conception, may lead to inventions being dedicated to the public, as no person could make a valid claim of inventorship.

While AI may not be an inventor, its role as a powerful tool in the inventive process is now formally recognized, with clear guardrails to ensure that human ingenuity remains the recognized source of patentable inventions.