USPTO Resets the AI Inventorship Conversation

Today, the USPTO quietly but decisively reset the conversation on AI inventorship. The Office rescinded its February 2024 guidance on AI-assisted inventions and issued revised rules, returning to core legal principles: the legal standard for inventorship remains unchanged, regardless of AI involvement in the inventive process. (See the full notice here: https://lnkd.in/gCKm8Acq)

For founders, innovators, and IP practitioners in AI, here are key takeaways from the new guidance:

1. Inventorship Remains a Strictly Human Endeavor

Only natural persons can be named as inventors under 35 U.S.C. § 100(f). AI systems cannot be named as inventors or joint inventors. Thaler v. Vidal, 43 F.4th 1207 (Fed. Cir. 2022). Conception—the "touchstone of inventorship," Burroughs Wellcome Co. v. Barr Labs., 40 F.3d 1223 (Fed. Cir. 1994)—requires a natural person to form a definite and permanent idea of the complete invention. AI is treated like any other tool, such as lab equipment or software.

2. Why the Rescission? No More Misapplying Pannu Factors

The 2024 guidance incorrectly applied the Pannu factors (for assessing joint inventorship among humans) to AI scenarios. Pannu v. Iolab Corp., 155 F.3d 1344 (Fed. Cir. 1998). Since AI isn't a "person," there's no joint inventorship issue to analyze when only one human is involved. For multiple humans using AI, Pannu still applies to evaluate their contributions.

3. No Separate Standard for AI-Assisted Inventions

The same rules apply across all inventions. The USPTO presumes the natural persons named on the application data sheet or oath/declaration are the inventors. Listing AI triggers a rejection under 35 U.S.C. §§ 101 and 115.

4. A Policy Shift Aligned with EO 14179

This update appears to support Executive Order 14179 ("Removing Barriers to American Leadership in Artificial Intelligence"), which directs agencies to revise policies for clearer, innovation-friendly AI frameworks. https://shorturl.at/dDucU

What This Means in Practice

The new guidance applies long-standing principles to AI as a "tool" (albeit a powerful one) used by human inventors to conceive of inventions and reduce them to practice. The inventorship analysis stays the same, but it's highly fact-intensive—focus on documenting human conception with particularity. Ensure invention records capture human oversight and judgment, name all human contributors to conception as inventors in your patent applications, and don't name AI systems as inventors.

If your teams are deploying AI for research and development, now is the time to review your internal processes, invention disclosure practices, and training. And most importantly, be sure you are capturing your AI-assisted inventions for patent protection.

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