AI-assisted inventions or seeking strategies to protect your intellectual property, consulting with a Fort Lauderdale patent attorney at The Lomnitzer Firm P.A. can provide the insight and support you need to safeguard your innovations.
The U.S. Patent and Trademark Office (USPTO) recently issued revised guidance on AI inventorship, clarifying how human involvement must be established when AI tools contribute to the inventive process. For innovators, businesses, and research institutions, the newly issued USPTO guidance underscores the need to carefully document human contributions and ensure compliance with existing patent standards.
With the issuance of the revised guidance, the USPTO officially rescinded its prior guidance, issued on February 13, 2024, entitled “Inventorship Guidance for AI-Assisted Inventions.” That Guidance relied heavily on the application of the Pannu factors to AI-assisted inventions.
The USPTO has now concluded that the Pannu factors are inapplicable to AI-assisted inventions. Those factors apply only in determinations of whether multiple natural persons qualify as “joint inventors.” Since AI systems are not persons and cannot be “joint inventors,” there can be only one natural person involved in inventing something with AI assistance. As a result, the Pannu factors are inapplicable because AI-assisted inventions have no joint inventorship questions for analysis.
The new USPTO guidance applies the same legal standard to determine inventorship for all inventions, whether the invention process involves an AI system or not. In other words, AI-assisted inventions are not subject to a separate or different legal standard.
According to the U.S. Court of Appeals for the Federal Circuit, only natural persons can be inventors. Thus, an applicant may not name AI as an inventor or joint inventor on a patent application.
The Federal Circuit bases this conclusion on “conception,” which it refers to as “the touchstone of inventorship.” Essentially, conception occurs when an inventor forms a definite and permanent idea of a complete, operative invention. Once the inventor settles on a specific idea or solution rather than a general goal, conception is complete.
The USPTO presumes that the inventors named on a patent application are the actual or joint inventors of the proposed patent. As a result, the USPTO will reject claims in a patent application listing an AI system or other non-natural person as an inventor or joint inventor.
The guidance treats AI systems as instruments used by human inventors. The USPTO considers AI systems akin to laboratory equipment, computer software, or any other tool that helps inventors during the invention process. It is permissible for inventors to use these tools without those tools becoming co-inventors.
When multiple natural persons collaborate to create an invention, even with AI assistance, traditional joint inventorship principles apply, including the application of the Pannu factors to determine joint inventorship. Involvement of an AI system does not alter the joint inventorship analysis among natural persons who contribute to the invention.
The updated guidance is equally applicable to design and plant patents. 35 U.S.C. 171 defines a design patent as “any new, original, and ornamental design for an article of manufacture.” Likewise, provisions related to utility patents are also generally applicable to design patents, including the inventorship inquiry, as interpreted by the Federal Circuit.
Under 35 U.S.C. 161, a plant patent involves the invention or discovery and asexual reproduction of a distinct and new variety of plant. Patent protection for plants is limited to plants “created as a result of plant breeding or other agricultural and horticultural efforts and that were created by the inventor.”
Any applications or patents that claim the benefit of or priority to a prior-filed application must name the same inventor. Alternatively, they must name at least one joint inventor in common with the prior-filed application. The same principle applies to AI-assisted inventions: the prior-filed application and the application or patent claiming priority or benefit therefrom must name the same natural person as inventor or have at least one joint inventor in common.
As with a regular patent application, a priority claim to a prior-filed foreign application naming a non-natural inventor is unacceptable, even if the foreign application allows a non-natural person to be named as a joint inventor. In this situation, the application data sheet filed with the U.S. patent application must list only the natural person(s) identified as the inventor, including the inventor(s) in common with the foreign application. Patent applicants should follow the same process for applications under 35 U.S.C. § 371 in which the international application includes a joint inventor who is a non-natural person.
Yes. The USPTO allows inventors to use AI systems as part of their creative or research workflow. The key requirement is that a human—not the AI system—be responsible for the inventive contribution.
The USPTO will reject any application that names a non‑human entity as an inventor. Applicants must correct the inventorship information before the application can move forward.
Yes. The same inventorship rules apply across utility, design, and plant patents. A natural person must have contributed to the creation of the design or plant variety, even if AI tools were used along the way.
In an era where artificial intelligence is reshaping the boundaries of invention, protecting your intellectual property requires more than creativity—it demands a clear understanding of evolving patent standards and inventorship rules. The Lomnitzer Firm P.A. is dedicated to guiding innovators, businesses, and creators through these complexities, ensuring that human contributions are properly documented and rights are preserved. To explore strategies for safeguarding your AI-assisted innovations and other intellectual property, contact a Miami patent attorney at (800) 853‑9692 or connect with us online today.
