The USPTO (Office) rescinded its 2024 “Inventorship Guidance for AI-Assisted Inventions” issued under Director Vidal and replaced it with its new Revised Inventorship Guidance for AI-Assisted Inventions (2025 Guidance).
Takeaway: The 2025 Guidance further green lights filing of patent applications on AI-related inventions. Under the new guidance, the Office will not challenge human inventorship for AI-related inventions as long as a human inventor is properly named. This holds even if a counterpart international application identifies a non-natural person as a joint inventor.
The Office recognizes AI tools may generate ideas but equates them with other tools used in R&D that do not impact joint inventorship analysis involving natural persons. While favorable to companies that rely on human inventorship for ownership of Al-related inventions, this 2025 Guidance is not binding on U.S. courts. Patent owners may still face challenges later in court in more difficult cases where an AI tool has made an inventive contribution solely or jointly with a human person until the law becomes more settled.
The USPTO's Standard for Determining Inventorship
The 2025 Guidance stated that under Federal Circuit precedent, only natural persons can be inventors, and because AI systems are not natural persons, they cannot be named as inventors because they are not natural persons.
The 2025 Guidance stated the Office's inventorship standard: "[t]he question is whether the natural person possessed knowledge of all the limitations of the claimed invention such that it is so clearly defined in the inventor’s mind that only ordinary skill would be necessary to reduce the invention to practice, without extensive research or experimentation." The 2025 Guidance stated that "[a]nalysis of conception turns on the ability of an inventor to describe an invention with particularity."
The USPTO’s Inventorship Guidance for AI-Assisted Inventions
The 2025 Guidance stated that the "USPTO presumes" that the inventors listed in the application "are the actual inventor or joint inventors of the application" and stated that an application should be rejected under 35 U.S.C. § 101 and 115 (or other appropriate action) if an "AI system or other non-natural person" is listed as an "inventor or joint inventor."
The 2025 Guidance went on to describe why it held this view. The 2025 Guidance stated that gen AI and other computational models "are instruments used by human inventors" and that "[t]hey are analogous to laboratory equipment, computer software, research databases." The 2025 Guidance stated that inventors use "services, ideas, and aid of others without the sources becoming inventors."
The 2025 Guidance stated that the traditional conception standard applies to inventorship and joint inventorship regardless of whether the inventor or inventors used AI systems during the inventive process.
Impact of the 2025 Guidance
The 2025 Guidance leaves open questions for highly AI-assisted R&D. The 2025 Guidance does not provide any guidance on situations where the named inventor cannot point to what parts she conceived because an AI truly conceived certain claim limitations. In situations like this, inventorship may "slip through the cracks" because the inventor may not be able to meet the traditional inventorship standard.
Further, the 2025 Guidance views AI models merely as instruments that human inventors merely use to conceive the invention. This may not always be true for some AI tools (e.g., improved agentic AI models). The 2025 Guidance seems to create a legal fiction that AI tools cannot make an inventive contribution. The Office presumes that the listed human inventors are the actual inventors.
The Office's policy may be fine for patent prosecution, but this may not hold water during litigation where deposed inventors directly answer inventorship questions. Even if an applicant truly believes that an AI system conceived part of an invention, the applicant does not have the option of listing an AI system as a joint inventor because the Office will issue a rejection under 35 U.S.C. 101 and 115.
For companies, the takeaway is operational rather than doctrinal. In some highly assisted AI research cases, companies may wish to document human conception thoroughly: maintain detailed inventor notebooks and other research records and capture AI prompts, outputs, and iterations. This may help establish actual possession of the invention by a human inventor even when AI systems provide inventive features that are claimed during patent application drafting and prosecution.
By: Mike Messinger and Brad Hough