"The U.S. Patent and Trademark Office (USPTO) has issued updated examination guidance ("New Guidance") on inventorship in applications involving artificial intelligence (AI). The document rescinds and replaces the February 13, 2024 guidance and clarifies how inventorship should be determined when AI is used in the inventive process. The New Guidance jettisons the Pannu test for this purpose, which focused on joint inventorship issues, and instead focuses on conception."
"The USPTO expressly rescinds the February 13, 2024 "Inventorship Guidance for AI-Assisted Inventions" in its entirety and withdraws its application of the Pannu joint inventorship factors to AI-assisted inventions as a general inventorship framework. The Office emphasizes that Pannu was and remains a doctrine to determine joint inventorship among multiple natural persons; it does not apply where the only other "participant" is an AI system, which by definition is not a person."
The USPTO rescinded the February 13, 2024 inventorship guidance and withdrew application of the Pannu joint inventorship factors to AI-assisted inventions. The Office clarified that Pannu addresses joint inventorship among multiple natural persons and does not apply when an AI system is the only other "participant." The New Guidance centers inventorship analysis on conception and treats AI systems as non-persons incapable of being inventors. When a single natural person uses AI during development, the joint inventorship inquiry does not arise. The approach may diverge from court determinations, so patent validity under the new framework will remain highly fact dependent and affect utility, design, and plant filing strategies.
Read at Intellectual Property Law Blog
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