US Patent Office issues new guidelines for AI-assisted inventions. The new director of the USPTO was busy during the last week of November – busy upsetting the robots of the future. John Squires stated that the patent office considers generative AI systems to be “analogous to laboratory equipment, computer software, research databases, or any other tool that assists in the inventive process.” AI as a tool is not a controversial take, but this marks a departure from the old standard, and it could catch you off guard.
This area of patent practice touches on how we treat artificial intelligence systems and robots. Two quotes come to mind.
He who is cruel to animals becomes hard also in his dealings with men.
That is Immanuel Kant. And here is Douglas Adams.
“The Encyclopedia Galactica defines a robot as a mechanical apparatus designed to do the work of a man. The marketing division of the Sirius Cybernetics Corporation defines a robot as “Your Plastic Pal Who’s Fun to Be With.” The Hitchhiker’s Guide to the Galaxy defines the marketing division of the Sirius Cybernetics Corporation as “a bunch of mindless jerks who’ll be the first against the wall when the revolution comes,” …
There will always be people who cannot empathize with others or must compulsively deny deference or respect to robots.
Pannu test
The old policy for determining inventorship in the context of AI-assisted inventions was from February 2024. Then, USPTO Director Kathi Vidal cited a three-part test for inventorship in Pannu v. Iolab Corp., 155 F.3d 1344 (Fed. Cir. 1998). Under the Pannu test, an inventor must have: “(1) contributed in some significant manner to the conception of the invention; (2) made a contribution to the claimed invention that is not insignificant in quality, when that contribution is measured against the dimension of the full invention; and (3) [done] more than merely explain to the real inventors well-known concepts and/or the current state of the art.”
USPTO guidance on AI and inventorship
See the “Revised Inventorship Guidance for AI-Assisted Inventions” 2025-21457 (90 FR 54636)
- Inventorship Rule: Under U.S. patent law, only humans can be inventors. AI systems cannot be named as inventors on a patent application.
- AI-Assisted Inventions: A patentable invention must include a significant human contribution to the inventive process. Simply using AI tools does not make the AI an inventor.
The office holds that the “Pannu factors only apply when determining whether multiple natural persons qualify as joint inventors.” The standard is “inapplicable when only one natural person is involved in developing an invention with AI assistance”. An AI can’t be listed as an inventor on a patent. See Thaler v. Vidal, 43 F.4th 1207, 1212 (Fed. Cir. 2022)
The office sees AI systems as tools used by human inventors “analogous to laboratory equipment, computer software, research databases, or any other tool that assists in the inventive process.”
The office does not share what should happen in a group of inventors where one or more inventors uses AI. The suggestion is that the use of AI does not change the role of an inventor. However, in a group, one individual could make a contribution that fills a small gap between what the AI serves up and the other inventors contribute. Is this gap an invention?
Does it create a new ground for invalidity?
The courts decide if a patent is valid. There are two grounds for invalidity here inventorship and invention.
Who is named an inventor matters
Could your patent be attacked for listing the wrong inventors? Yes, always. This happens. Indeed, misnaming inventors and associated maneuvering occur in patent matters.
Be careful including and excluding inventors. Sometimes employees at companies what to add the company’s leaders as inventors without identifying their contributions. It is often tempting to exclude a contractor or partner from inventorship due to the perceived complications of ownership. Ask us if your inventor list is appropriate.
Aside: Egenera, Inc. v. Cisco Systems, Inc. (Fed. Cir. 2020). Egenera’s network system architecture patent (US7231430 / Brownell) listed eleven inventors. At first, the patentee wanted to drop one inventor because he joined the company after a key reference was published. This allowed them to swear behind the reference. Later, it was determined that he was the main inventor. The patentee thus couldn’t add him back as the inventor and couldn’t use. The lesson here is don’t play games.
Could your patent be attacked using an AI? Maybe. It is best to understand these issues carefully. It is possible that your or an employee don’t contribute enough to qualify as an inventor. However, this doesn’t seem like a likely attack.
Did the inventor invent?
A patent claim can be invalidated for want of inventive step, or in other words, because it would have been obvious to a person of ordinary skill in the art.
If the skilled artisan, a hypothetical person, is reasonably assumed to routinely use AI in their work, does that change what is an inventive step? Change what is obvious?
We don’t know and we suspect the case law on this will be split. For example, you could imagine it be very different in arts where innovation is predictable versus fields where experimentation is required.
You can count on AI changing what is the common general knowledge available to the hypothetical artisan. Everyone can access a synthesis of what is common knowledge on most topics.
What can you do?
Companies using AI should document human contributions carefully. If you are using AI and part of the team’s work is an element of a claim in a patent application, then document the human involvement in the contribution to the claim. Be honest, if AI was involved, then explain how. Also, don’t reduce human involvement to a flash of brilliance. Add some details about how the human inventors understood the problem, properly created the prompt for a solution, and recognized the corrected solution. Looking back ten years, we didn’t credit Google or Wikipedia as inventor for merely showing results to a query, did we?
References
USPTO
- “Automated Search Pilot Program” 2025-19493 (90 FR 48161)
- “Guidance on Use of Artificial Intelligence-Based Tools in Practice Before the United States Patent and Trademark Office” 2024-07629 (89 FR 25609)
- “2024 Guidance Update on Patent Subject Matter Eligibility, Including on Artificial Intelligence” 2024-21085 (89 FR 76090)
- “Revised Inventorship Guidance for AI-Assisted Inventions” 2025-21457 (90 FR 54636)
PMP
- Nov 20, 2025: Thrive despite changes at the USPTO
- Nov 18, 2025: Understand changes at the USPTO
- Oct 31, 2025: How to change your filing strategy after the USPTO’s Section 101 shift
- Oct 28, 2025: Ten or fewer claims? The USPTO has a new way to accelerate your application
- Oct 24, 2025: Do you hail your robot overlords?
- Sept 14, 2025: DABUS cries for attention: Understand why AI inventorship was refused
Conclusion
AI can assist in invention, but patents remain tied to human inventors. Companies using AI should document human contributions carefully to secure IP rights.
If you would like to discuss protecting your invention with a patent application, please contact us.
