USPTO procedures are changing rapidly alongside digital transformation and AI-enabled processing. Federal law constrains inventorship rules by requiring inventors to be natural persons under 35 U.S.C. § 100(f), as held in Thaler v. Vidal. USPTO guidance issued in February 2024 applied a three-factor test from Pannu v. Iolab to determine whether a person’s prompts made a significant contribution to each claim, effectively treating AI as an unnamed participant. Revised guidance issued in November 2025 rescinded the prior approach. The revised guidance limits Pannu to collaborations among multiple natural persons, applies a uniform conception standard, and characterizes AI as a tool similar to laboratory equipment or research databases.
"Every current USPTO guidance document on AI inventorship operates within a constraint fixed by federal courts, not by any administration: AI cannot be named as an inventor. In Thaler v. Vidal, 43 F.4th 1207 (Fed. Cir. 2022), the Federal Circuit held that inventors must be natural persons under 35 U.S.C. § 100(f). The Supreme Court declined review, and Thaler remains binding precedent."
"On February 13, 2024, the USPTO issued Inventorship Guidance for AI-Assisted Inventions (89 Fed. Reg. 10,043), which borrowed the three-factor test from Pannu v. Iolab Corp., 155 F.3d 1344 (Fed. Cir. 1998), a doctrine designed for joint inventorship disputes among humans, and applied it to evaluate a single person's interaction with an AI tool. Examiners were directed to scrutinize whether prompts constituted a “significant contribution” to each claim, effectively treating AI as an unnamed silent co-inventor."
"On November 28, 2025, Director Squires issued Revised Inventorship Guidance for AI-Assisted Inventions (90 Fed. Reg. 54,636), rescinding the 2024 guidance in its entirety. The operative shifts are clear: Pannu applies only when multiple natural persons collaborate; the uniform standard is now conception; and AI is characterized as a tool analogous to laboratory equipment or research databases. The presumption of human inventorship has been rest"
Read at IPWatchdog.com | Patents & Intellectual Property Law
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