CLIENT ALERT: Building a Strong Brand Starts With Legal Protection Amid New USPTO Changes
- amburcsmith
- 3 days ago
- 3 min read
By: Mia Moore
All year long we’ve been challenging our clients and colleagues to monitor domestic and international policy at the intersections of artificial intelligence and intellectual property. The USPTO’s latest guidance is a reminder of the importance of this work. Check out the summary and key takeaways below, and subscribe to be the first to receive periodic updates.
On November 28, 2025, the U.S. Patent and Trademark Office issued its Revised Inventorship Guidance for AI-Assisted Inventions, formally withdrawing its 2024 framework for AI-assisted inventorship. GovInfo As AI becomes embedded in nearly every stage of research and development, this update provides essential clarity for applicants navigating inventorship in an increasingly automated landscape.
This guidance makes one principle unmistakably clear: AI may support innovation, but it cannot be an inventor. The result is a more streamlined, legally aligned framework that reinforces longstanding inventorship standards while addressing the realities of modern technology.
Human Inventorship Remains Non-Negotiable
Consistent with Federal Circuit precedent and the governing statutory definitions, the USPTO’s new guidance reaffirms that only natural persons can be named as inventors. No matter how advanced an AI system becomes, it cannot:
Be listed as an inventor or joint inventor,
Contribute legal “conception,” or
Support a priority claim as an inventorship source.
AI, whether generative, analytical, or predictive, remains a tool. The human inventor must still possess the complete and definite idea of the claimed invention.
Rescission of the 2024 Guidance
The USPTO withdrew its earlier guidance because it applied the Pannu joint inventorship standard, established in Pannu v. Iolab Corp., 155 F.3d 1344, 1351 (Fed. Cir. 1998), to situations involving AI. Under Pannu, a joint inventor must make a contribution to the conception of at least one claimed invention, and the contribution must be intellectual, not merely experimental or administrative. The standard only applies when evaluating contributions among multiple human inventors. Because AI is not a person, joint inventorship is not implicated when AI is the only other contributor.
This clarification aligns the USPTO’s approach with statutory requirements and existing case law that define inventorship exclusively in terms of natural persons.
Conception Remains the Defining Standard
Inventorship continues to hinge on conception, defined as the formation in the mind of the inventor of a specific and settled idea of the complete invention.
To be recognized as an inventor, a natural person must be able to:
Articulate the invention with precision,
Understand all material limitations of the claimed subject matter, and
Demonstrate a concrete solution rather than a general research objective.
The use of AI does not alter this standard. If the natural person cannot describe the invention without relying entirely on AI-generated material, conception has not occurred.
Human Collaboration Still Follows Traditional Joint Inventorship Principles
Where multiple natural persons contribute to an invention developed with AI assistance, the traditional joint inventorship inquiry still applies. Each inventor must satisfy the established Pannu factors and demonstrate a significant contribution to the claimed subject matter.
AI’s involvement does not dilute the threshold for human contribution, nor does it expand inventorship to individuals who merely oversee, prompt, or review AI outputs without contributing substantively to the inventive concept.
Applicability to Utility, Design, and Plant Patents
The updated guidance applies across the patent spectrum:
Utility patents
Design patents
Plant patents
For plant patents in particular, the USPTO underscores that the inventor must have actively contributed to the creation of the new variety, even when AI tools facilitate selection or breeding. Mayer Brown
Priority Claims: Important Procedural Implications
The guidance includes a significant procedural clarification regarding domestic and foreign priority claims. A U.S. application cannot claim priority to a foreign filing that lists an AI system as the sole inventor. At least one natural person must be named in both filings to establish a valid priority relationship.
For international applicants and entities using AI-intensive pipelines, this is a critical compliance point.
What This Means Going Forward
This updated guidance reinforces that while AI can accelerate innovation, the legal framework continues to center human intellectual contribution. Applicants and organizations should ensure:
Clear documentation of human conception,
Accurate inventorship determinations early in the drafting process,
Consistent naming of natural person inventors across international filings, and internal policies that distinguish between human creativity and AI-generated assistance.
As AI tools become more embedded in the inventive process, adherence to these standards will be essential for maintaining valid and enforceable intellectual property rights.
Ready to Protect Your Innovation in the Age of AI?
If you're developing AI-assisted technology and preparing to apply for patent, trademark, or copyright protection, now is the time to ensure your inventorship determinations and filing strategy align with the USPTO’s updated standards.
Book a consultation or end of year strategy session today to ensure your AI-powered inventions are protected and protectable in the year ahead.
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