Again, the USPTO Comes Out with New Guidance on AI-Assisted Inventions
Last February the USPTO issued guidance on AI-assisted inventions (discussed here). That guidance emphasized use of the factors on inventorship set forth in Pannu v. Iolab Corp., 155 F.3d 1344 (Fed. Cir. 1998).
Now the USPTO has issued new guidance, “Revised Inventorship Guidance for AI-Assisted Inventions,” 90 FR 54636 (Nov. 28, 2025). The revised guidance replaces the February 2024 guidance, which has been rescinded.
The new guidance explicitly eschews the broad suitability of the Pannu factors, stating that the factors apply only to joint inventorship situations, and are “inapplicable when only one natural person is involved in developing an invention with AI assistance.” Unfortunately, the new guidance doesn’t offer much in place of the Pannu factors for determining whether invention was by one or more natural person(s) (which is allowed), or only by AI (which is not permitted for a patent).
Instead of providing direction in the situations where humans and AI are both involved in producing an invention, the new guidance rests on a number of truisms: that AI remains “tools used by the human inventor who [may have?] conceived the claimed invention”; that conception is “the touchstone of inventorship,” such conception being evidenced by the inventor having the invention “clearly defined in the inventor’s mind”; and that the Pannu factors provide guidance when multiple humans are being considered as co-inventors.
But how will the USPTO handle questions of inventorship? Basically by ignoring them. If AI is listed as an inventor or co-inventor, a rejection will be made. In the absence of that the USPTO will not make an inquiry, presuming that the “inventors named on the application data sheet or oath/declaration are the actual inventor or joint inventors of the application.”
Still, the USPTO accepting the inventorship listed by the applicant does not mean that the patent will be found valid in litigation. Courts will examine AI-related inventions carefully to see if the human conception requirement was met, and invalidate those patents that don’t meet the test. Applicants should proceed with caution in the area of AI-assisted inventions, examining the facts for human conception of the invention, even if the USPTO will not.
The attorneys at Renner Otto will continue to monitor this and other developments as they occur at the USPTO. We strive to be authorities in all matters concerning the ever-evolving landscape of Intellectual Property; however, the information provided on our website is not intended to be legal advice, nor does it create an attorney-client relationship.